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Competence through Specialization

Domain Names

Our attorneys are recognized experts in domain name law with significant experience in the domain name industry dating back to 1997.

We have advised many clients on numerous launches of TLDs including sunrise periods, launch procedures and validation of rights over the last decade and have also counseled clients on cutting-edge issues such as the new generic top-level domain (gTLD) program, including drafting and prosecuting new gTLD applications for companies such as Merck KGaA, BMW Group, Der Spiegel, Fresenius SA, and Deutsche Vermögensverwaltung AG.

As panelist for domain name dispute proceedings at the World Intellectual Property Organization (WIPO), our Partner Dr. Bettinger has decided and has represented trademark owners in more than 200 UDRP proceedings against abusive domain name registrations. We currently represent Merck KGaA against Merck & Co. Inc. and ICANN in one of the most striking and complex conflicts concerning the application for new gTLDs.
 
As members of the Legal Advisory Board of the German Registry for .de Domains, DENIC e.G., head of the ICANN Task Force of the AIPPI Trademark Committee and active members in ICANN’s Intellectual Property Constituency (IPC) we serve as strong advocates for brand owner and other client interests in the development of global Internet and domain name policy. As authors and editors of the “Domain Name Law and Practice", and frequent speakers on major conferences, we are actively contributing to the further development of this dynamic field of law.

We offer the following full range of domain name related services:

Application for new generic Top-Level-Domains (new gTLDs)

Our team has the necessary legal and technical expertise to prepare and manage a gTLD application through all facets of the application process, including dispute resolution at ICANN.

We collaborate with well-known Internet service providers to comply with all technical requirements for operation of the gTLD registry.

In the first application round for new gTLDs, we successfully provided legal support for the following applicants:

- Merck KGaA for <.merck> and <.emerck>
- BMW Group for <.bmw> and <.mini>
- Der Spiegel for <.spiegel>
- Canton Zurich (Switzerland) for <.zuerich>
- FLSmidth for <.fls>
- Deutsche Vermögensberatung AG for <.dvag>, <.vermögensberater>, <.vermögensberatung>, <.allfinanz>, <.allfinanzberater>, and <.allfinanzberatung>

Our services include:

 

  • The preparation of application documents and filing of the application
  • Design and execution of a framework for public procurement and dispute resolution
  • Strategic advice on the technical implementation of registry functions
  • Consulting on the technical and economic requirements for applying for and operating a gTLD
  • Project management
  • Advice and representation in the filing and defense against objection proceedings (Legal Rights Objection, String Confusion Objection, Community Objection and Limited Public Interest Objection), as well as the use of ICANN “accountability mechanisms” (Request for Reconsideration and Independent Review) against the decisions of ICANN

Representation in domain name disputes

  • Negotiation with the opposing party for extrajudicial settlement disputes, transmission of warning letters and responding to such letters, and the filing of anticipatory briefs
  • Enforcement our clients’ rights in trademarks and trade names against unlawful registration and use of domain names in court and in alternative dispute resolution proceedings at the World Intellectual Property Organization (UDRP) and the Czech Arbitration Court (Alternative Dispute Resolution for .EU)
  • Representation and the provision of advice for clients in country-specific dispute resolution proceedings (ccTLD-specific proceedings)

Domain name contracts

  • Drafting of domain name licensing, purchase, and sharing contracts and other domain name use agreements; pledge, assignment and security agreements
  • Advising on the sale and purchase of domain names

Commercial exercise and valuation of domain names

Often, the value of a domain name becomes a critical question in the course of creating purchase or license agreements or when the domain name is an asset or liability in foreclosure or insolvency proceedings. The commercial value of the domain name is also important for a company for internal accounting requirements. In such contexts, we advise clients:

 

  • As to the commercial utilization of domain names when purchased or licensed, or when such domain name is collateral or a liability in foreclosure or insolvency proceedings
  • On the value of the domain name for in-company accounting requirements, and provide due diligence searches and company transfer agreement for the purchase and sale of domain names
  • As to the use of domain names during foreclosure

Domain Name Registration and Portfolio Management

  • Worldwide registration and management of domain names in generic and country-code Top-Level Domains (gTLDs and ccTLDs)
  • Mediate and communicate with ccTLD representatives if additional requirements are necessary for registration
  • Monitoring domain name status and renewing domain name registrations
  • Assuming the function of administrative contact (admin-c) for domain name registration purposes (Local Presence Agreement)
  • Domain name searches
  • Monitoring domain name registrations for conflict with client trademarks and tradenames
  • Updating registration information (WhoIs) at the responsible registry/registrar

Comprehensive, up-to-date information about the domain name system, domain name case law, and information on dispute resolution procedures (UDRP, .eu domain disputes, etc) can be found in our legal database.