Why you may want to reconsider that co.za domain name

If you are thinking about registering a co.za domain name, you may want to consider your possible liability to ZA Central Registry NPC (formerly called Uniforum), the organisation which administers the co.za namespace. It could be substantial.

If you are thinking about registering a co.za domain name, you may want to consider your possible liability to ZA Central Registry NPC (formerly called Uniforum), the organisation which administers the co.za namespace. It could be substantial.

The starting point are the warranties you give when you apply to ZACR to register a co.za domain:

Applicant hereby irrevocably represents, warrants and agrees that:

  1. its statements in the Application are accurate and complete;
  2. it has the right without restriction to use and register the Domain Name;
  3. it has a bona fide intention to use the Domain Name on a regular basis on the Internet;
  4. the use or registration of the Domain Name by Applicant does not or will not interfere with, nor infringe the right of any third party in any jurisdiction with respect to trade mark, service mark, trade name, company name, close corporation name, copyright or any other intellectual property right;
  5. it is not seeking to use the Domain Name for any unlawful purpose whatsoever, including, without limitation, unfair competition, defamation, passing off or for the purpose of confusing or misleading any person;
  6. at the time of the initial submission of the Application, and at all material times thereafter, it shall have an operational name service from at least two operational Internet servers for the Domain Name. Each server is and will continue to be fully connected to the Internet and be capable of receiving queries relating to the Domain Name and responding thereto;
  7. it has selected the Domain Name without any input, influence or assistance from UniForum.

Of these warranties, points 4 and 6 could be problematic:

Warranty 4

In order to comply with this warranty, you should ideally conduct an exhaustive search of all jurisdictions in order to confirm that your proposed domain name “does not or will not interfere with, nor infringe the right of any third party in any jurisdiction”, whether that right be rooted in “trade mark, service mark, trade name, company name, close corporation name, copyright or any other intellectual property right”. That is very, very broad.

You can’t possibly know every brand, company or trading name which you could possibly be stepping on when you register your domain. Trade marks tend to be somewhat geographically and thematically limited but copyright is pretty universal and “any intellectual property right” is a really broad catchall.

Every time you register a domain name, you take the chance that it may correspond with a brand, company or trading name and someone may contend that your domain name infringes his or her rights. If that happens, you are in breach of your warranty and it doesn’t matter whether you intentionally infringed anyone’s rights. The inquiry is a factual one.

Warranty 6

This warranty can be tricky because you not only require two operational name servers to register the domain (name servers map the domain name to IP addresses associated with actual servers) but you have to warrant that “[e]ach server will continue to be fully connected to the Internet and be capable of receiving queries relating to the Domain name and responding thereto”.

This is simply not in your control. You may register with an ISP, use its name servers to register your domain and your ISP’s servers could go offline temporarily or the ISP could go out of business without you being aware of it. Even if you are aware of this, you may have parked the domain for future use and you may forget to migrate it to another ISP in your rush to move all your other data off.

What could go wrong?

All this may not seem particularly problematic until you read a little further:

Pursuant to the above warranties, Applicant hereby agrees that it shall defend, indemnify and hold harmless UniForum, its directors, officers, members, employees and agents, for any loss, damage, expense or liability resulting from any claim, action or demand arising out of or related to a breach of the aforementioned warranties or the use or registration of the Domain Name, including reasonable attorneys fees on an attorney and own client basis. Such claims shall include, without limitation, those based upon trade mark infringement, copyright infringement, dilution, unfair competition, passing off, defamation or injury to reputation. UniForum agrees to give Applicant written notice of any such claim, action or demand within reasonable time of becoming aware thereof. Applicant agrees that UniForum shall be defended by attorneys of UniForum’s choice at Applicant’s expense, and that Applicant shall advance the costs incurred in such litigation, to UniForum on demand from time to time.

This indemnity is very broad. For starters it requires you to not only cover ZACR for any costs it incurs if you breach the warranty, you are also required to “defend” ZACR from “any claim, action or demand arising out of or related to a breach of the aforesaid warranties or the use or registration of the Domain Name”. It goes on to cover “reasonable attorneys fees on an attorney and own client basis” which is not reasonable at all. The “attorney and own client” scale of legal costs is used as a punitive costs scale in court proceedings. The attorneys who would defend ZACR from the envisaged claims will be “attorneys of [ZACR’s] choice at [your] expense, and … [you] shall advance the costs incurred in such litigation, to [ZACR] on demand from time to time.” It is a lot of text but the upshot is that you will be required to pay for ZACR’s lawyers, upfront, if there is a claim flowing from –

  • breach of your warranties (which I listed above);
  • “the use or registration of the Domain Name”;
  • “without limitation, those based upon trade mark infringement, copyright infringement, dilution, unfair competition, passing off, defamation or injury to reputation”.

A relatively cheap example is a company sending ZACR a deregister a domain name and transfer it across because the company believes your domain name infringes one or more of its rights. ZACR briefs its lawyers to consider the claim and charges, say, R1 500 (very conservative, probably more) an hour to review the demand, formulate a response, discuss the response with ZACR and send it along to the company. That exercise could cost, as a guess, R4 500 if the lawyers are working very efficiently. That cost could be passed along to you to pay. There could, of course, be further costs ZACR could pay to its lawyers for follow up communications, meetings and other action down the line. This is before you take into account possible losses the company may claim from ZACR and be awarded down the line.

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p>Suddenly the domain you pay R50 to R60 could be much more expensive. What you should ask yourself is whether you can afford to take a chance (or have a truly unique domain name)?

The looming domain name war that brands should be preparing for

A lot of new generic Top Level Domains (“gTLDs”) are becoming available and their emergence is making life pretty interesting for brands which have to carefully take stock of which gTLDs could have an impact on their trademarks and which domains they should register to protect themselves. To complicate the situation even further, the roll-out is a phased roll-out and some of these new gTLDs include local South African gTLDs like .joburg, .capetown and .durban. Brands that don’t understand the registration process are going to lose out of potentially valuable domains, each of which could threaten their brands and trademarks,

You probably read or heard that ICANN (the body responsible for administering the domain name system that makes the Internet work) approved a number of generic Top Level Domains (usually referred to as “gTLDs”) in 2013. You are familiar with a number of gTLDs already: .com, .net, .org, .info and more. What changed last year is that a lot more gTLDs were approved. A couple randomly selected gTLDs include .blog, wine, .shop, .web, .photo (not to be confused with .photos), .sexy, .community, .cool, .agency, .social, .ceo and even .guru. The new gTLDs include gTLDs in other languages too including Chinese, Arabic, Cyrillic and even Hindi.

To say the Internet is becoming a pretty busy place for brands is an understatement because each of these new gTLDs represents a branding opportunity and because there are potentially a number of similar or related gTLDs, brands have to be pretty vigilant and proactive when it comes to registering their preferred domains at these new gTLDs. A hypothetical example is, say, Acme Hotels which has already registered acmehotels.com and possibly even acmehotels.net. One of the new gTLDs is .vacations so Acme Hotels may want to register acmehotels.vacations, perhaps even acmehotels.luxury or even acmehotels.holiday. What about a digital agency that delights its clients with its digital marketing services and may already have digitalagency.com and digitalagency.net. It should probably register digitalagency.social and even aim for digital.agency (although that could be a competitive one for sure).

To add to this, gTLDs have been and will become available in stages and, when they first become available, they will not be available for general registrations like most domains currently are. Brands will have an opportunity to apply for domains corresponding with their trademarks in a so-called “Sunrise” phase

Sunrise services allow trademark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public.

New gTLD registries are required to offer a Sunrise period of at least 30 days.

Brands that don’t have competing claims for domains at these new gTLDs will have an opportunity to register their preferred domains, although possibly at a premium price. Those brands who do have competition will have to bid for the domains at an auction.

Preparing for this process is no small feat. For starters brands will have to review the gTLDs that are either available or which are becoming available and identify the domains they require. Ideally brands should also register their (registered) trademarks with ICANN’s Trademark Clearinghouse which is integrated with the domain name registration process for the new gTLDs and gives the companies operating the new gTLDs a mechanism to verify trademark claims. Here is a quick overview of what the Trademark Clearinghouse does and what the benefits are for brands:

Once the Sunrise phase is over, domains at the new gTLDs will probably become available for general registrations but all the valuable domains may well be gone by then and brands that missed out on the process will be left lodging claims for trademark infringement (and given the number of new gTLDs, there will probably be quite a lot more claims for arbitrators to work through).

If you thought it couldn’t be any more interesting (or scary, depending on your perspective), some of the new gTLDs which should start becoming available in the coming months include gTLDs with a local flavour:

  • .africa
  • .joburg
  • .capetown
  • .durban

If you are a South African business with regional offices, you may want to give some serious thought to the city gTLDs and pre-register your domains with your domain name reseller as soon as possible (disclosure: we are a domain name reseller with South Africa’s only active ICANN approved domain name registrar and we help our clients register domain names as part of their brand protection strategy).

The phased gTLD roll-out is probably going to help pre-empt a “big bang” but it is also going to keep brands concerned about their trademarks and branding pretty busy for an extended time period as they research which new gTLDs become available and when and then prepare for each registration process, defending their trademarks as they go.

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p>As I said earlier, saying the Internet is becoming a busy place is an understatement. For brands, it is about to become pretty interesting too.

Extorted out of a $50 000 Twitter handle

Update (2014-02-26): The Next Web has reported that Hiroshima is once again in control of his envious Twitter handle, @N.

A good Twitter handle is an increasingly valuable part of your online identity and if you were fortunate enough to register a very short or common name for your Twitter handle, it could be that much more valuable. Naoki Hiroshima was one of those really fortunate people and he published a cautionary tale on Medium involving GoDaddy, PayPal, a devious extortionist’s social engineering and poor security. The story begins with this –

I had a rare Twitter username, @N. Yep, just one letter. I’ve been offered as much as $50,000 for it. People have tried to steal it. Password reset instructions are a regular sight in my email inbox. As of today, I no longer control @N. I was extorted into giving it up.

If your social profiles are important to you, make sure you safeguard them adequately. Security measures may add more complexity but they exist to prevent attacks like this one. What I found particularly interesting was Hiroshima’s recommendation not to use a custom domain-based email address as your notification address because it can be susceptible to this sort of attack.

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p>This may not be feasible for corporate accounts but it is certainly something to plan for.

How your blog can be taken from you

Blog platforms like Tumblr, Blogger, Posterous and WordPress.com are very popular, as are other platforms like Twitter and Facebook. While the majority of these services’ users are individuals, there are a substantial number of business users who are drawn to the opportunities these services present. What these users often don’t realise is that their blogs can effectively be taken from them by the service providers themselves, often for no particular reason.

Each of these services allow users to create accounts and operate their blogs or profiles under a personalised domain. The domain might be name.service.com or service.com/name. These domains become associated with users, often so much so that unscrupulous users register these accounts in brands’ names in the hope of extorting a profit from the company concerned in exchange for relinquishing the domain or username (this behaviour is brandsquatting). The companies that operate these platforms typically reserve the right, in their terms and conditions, to terminate offending registrations and make those domains or user accounts available to brand owners. Unfortunately mistakes can be made and legitimate users can find themselves deprived of their online identities in the face of a demand from a brand owner. Depending on the service concerned, blogs can be removed quite intentionally and without reason.

danah boyd, a researcher and generally smart lady, discovered this the other day.

Zephoria tumblr

boyd has an account with one of the more popular blogging services, Tumblr (I also have an account there), and she discovered that her blog was effectively removed by Tumblr a couple days ago due to a competing claim by a company which uses the same name as her online persona, “zephoria”:

I’m not the most active Tumblr user but I’ve had an account on the service for quite some time because teens are pretty active there. I even used the service to post an ongoing list of different open-access journals which was regularly visited by academics. I also had a list of interesting books and other such collections. It now seems to be gone. And the URLs are now broken (although some are still available in Google’s cache). [Update: I learned that it was all moved to a new location, again, without them telling me.]

A few years ago, I learned that there is a technology consulting company called Zephoria.com. And apparently, they’ve become a social media consulting company. In recent years, I’ve found that they work hard to block me from using the handle of zephoria on various social media sites. Even before the midnite land grab on Facebook, they squatted the name zephoria, probably through some payment to the company. But this is a new low… Now they’re STEALING my accounts online!?!?!? WTF?!?!?!

Tumblr’s President, John Maloney, confirmed boyd’s suspicions that she lost her domain due to a trade mark claim lodged with Tumblr by Zephoria, the company, and a Tumblr employee relocated boyd’s blog and delivered her domain to the company instead. The account was restored to boyd but this incident highlights a hidden problem which many may be oblivious to.

Terms and Conditions Prevail

The central issue is that these services are privately operated and their use is subject to their terms and conditions. As I mentioned in my brandsquatting post, these terms and conditions govern these sorts of domain/username/account related issues, not independent bodies like ICANN in the context of a more conventional domain name dispute. When users sign up with Tumblr, Posterous, WordPress.com and virtually every other service on the Web today, they are required to agree to the applicable terms and conditions which are the legal framework which govern access to and use of the services concerned.

In the case of Tumblr, its Terms of Service give it quite a bit of discretion over its site (the emphasis is mine):

Tumblr reserves the right to remove any Subscriber Content from the Site, suspend or terminate Subscriber’s right to use the Services at any time, or pursue any other remedy or relief available to Tumblr and/or the Site under equity or law, for any reason (including, but not limited to, upon receipt of claims or allegations from third parties or authorities relating to such Subscriber Content or if Tumblr is concerned that Subscriber may have breached the immediately preceding sentence), or for no reason at all.

This means that Tumblr can terminate your account or remove your content without any particular reason. Consider the impact such unilateral action could have on a user (including a business user) who operates a blog on a service like Tumblr and comes to rely on that blog as part of an online identity or business presence. Tumblr isn’t the only company that reserves this right, though.

Automattic, the company that runs the hosted blogging platform WordPress.com includes the following provisions in its Terms of Service:

Without limiting any of those representations or warranties, Automattic has the right (though not the obligation) to, in Automattic’s sole discretion (i) refuse or remove any content that, in Automattic’s reasonable opinion, violates any Automattic policy or is in any way harmful or objectionable, or (ii) terminate or deny access to and use of the Website to any individual or entity for any reason, in Automattic’s sole discretion. Automattic will have no obligation to provide a refund of any amounts previously paid.

Termination. Automattic may terminate your access to all or any part of the Website at any time, with or without cause, with or without notice, effective immediately.

Blogger, a Google property, is probably one of the biggest, if not the biggest, hosted blogging platforms on the Web. Its Terms of Service include the following provision:

10. Termination; Suspension. Google may, in its sole discretion, at any time and for any reason, terminate the Service, terminate this Agreement, or suspend or terminate your account. In the event of termination, your account will be disabled and you may not be granted access to your account or any files or other content contained in your account although residual copies of information may remain in our system for some time for back-up purposes. Sections 2, 3, 5 – 8, and 10 – 15 of the Agreement, along with applicable provisions of the general Terms of Service (including the section regarding limitation of liability), shall survive expiration or termination.

Posterous, another popular blogging service, interestingly doesn’t have similar provisions in its Terms of Service and, instead, focuses its ability to remove content on copyright violations.

Options

Unfortunately this is something that could happen to legitimate users who make use of a username or domain which, as boyd pointed out, “have meaning to them personally” or even which relate to a brand or the company behind that brand. This leaves users in a precarious position, particularly where they are using a handle which is similar to or the same as an existing brand, even if that brand is only known on the other side of the planet. The Internet’s global nature means that consumers in North America may come across a Cape Town company’s Tumblr blog, thinking it belongs to an unrelated American company. That is a degree of confusion which could lead the American company to believe its trade mark is being infringed and Tumblr should transfer the disputed domain to it as the trade mark holder in that market.

Because of the ease with which a service provider can suspend or terminate an account on its service, rightly or wrongly, this exposes users to a real risk that they could lose their account or the benefit of a domain or handle they have been using with honest intentions. These service providers contractually retain a very broad discretion over how their services may be used and under what circumstances.

What can users do? Fortunately the cost of hosting services is fairly low so one option is to establish a blog under a domain name on a hosting service contracted by the user. This option is referred to as a “self-hosted” option and it removes the possibility of companies like Tumblr, Automattic or Google arbitrarily messing with users’ accounts on the basis of their terms and conditions alone. That said, this option has its own, similar challenges. Hosting providers may retain the right to take similar steps should they become aware of violations of their terms and conditions too. In addition, a brand owner could challenge a domain name registration with the appropriate registrar or domain name dispute resolution service where it feels a domain name was improperly registered.

Both options have their associated risks and hosted blogging services particularly so. What is important is that users (including companies) make sure they review the terms and conditions relating to the service/s they use or intend using and satisfy themselves that they are not exposed to a level of risk that they find unacceptable.

(Credit: Thanks to William Carlton for pointing this story out on his blog)

The social Law Firm (otherwise known as Law Firm 2.0)

I’ve been a little obsessed with what a law firm should or could look like in this era of a social Web and a two-way flow of communication between providers and their clients becoming a norm. The social Web introduced the possibility of engaging a little differently with clients and I have been debating (mostly with myself – its been an interesting private conversation) what I could change in our firm to take advantage of this “social media mindset” in our day to day business.

It is pretty clear to me that the traditional legal services model is changing. At least the focus is shifting from documents back to raw expertise because that is ultimately what practicing law is about (at least in my humble experience of about a decade or so). There are a number of services popping up that sell legal documents to the person on the street for far less than what an attorney would charge to prepare them. While there is certainly still a market for more intricate documents due to the special requirements for those documents that a standard document off the shelf could never anticipate but I suspect even those documents could somehow find themselves on a shelf at CNA one day.

Short of a readily available and really effective artificial intelligence, lawyers’ knowledge can’t be replicated and put on a shelf just yet. Clients still need to brief attorneys to harness what is often highly specialized and carefully cultivated legal knowledge and that is where our value as a profession lies. But this isn’t what I wanted to write about in this post. What I have been thinking about lately has more to do with how we work with our clients.

I made a silly decision the other day which had to do with applying aspects of our terms of appointment to a couple of our clients. I met with one of those clients soon after I sent off the email informing them about our decision. Our meeting was a regularly scheduled status meeting to discuss a number of files we are working on for his company (this client takes advantage of our retainer fee structure so its worthwhile for him to meet with us regularly to discuss developments and new work) but at the end of our discussion about ongoing work, we chatted about my email. The discussion became an invaluable feedback session where we debated a number of issues. What I realized as we debated these issues is that the decision I took was more in line with what I see as a traditional approach to client management on some level. It was ironic because my focus is on social media and a very different approach to customers by their providers.

A had a couple “a-ha” moments in the course of that meeting and it got me thinking about better ways to communicate with our clients. Another irony is that many of the lessons I learned yesterday morning were communicated to me years ago in my previous firm, albeit as advice to play a more political game with colleagues and clients to ensure their collegiality and patronage (I have a strong aversion to political games, I am far more in favour of authentic interaction with people and that is one of social media’s appeals). What I realized is hardly revolutionary. Many of the ideas about client interaction go back generations to the days of small villages and marketplaces. They are also ideas which have been implemented by better lawyers than me as long as there have been lawyers and their clients. I thought I’d share some of these ideas anyway.

Image credit: 25/365 – Organization. by BLW Photography (licensed under a Creative Commons Attribution 2.0 license)

There seems to be a gulf between lawyers and their clients for the most part. Lawyers are these mystical creatures who employ strange language and machinations in an effort to achieve seemingly simple results. I often see it in the way that we lawyers speak and draft our documents and I’ve written about the importance of speaking plainly about what we do and the documents we create before. I think one of the reasons we perpetuate this is as a sort of defence against the unwashed masses (our clients). We raise these linguistic barriers to prevent them from trying to do what we do themselves. Lawyers also work to maintain the perception that we are vital to our clients (we are actually but not because we use complicated language – its because the world is becoming increasingly complex and regulated and you need lawyers to interpret and navigate those legal frameworks).

What is often missing is a realization that clients are not a threat but can be our best allies. As I listened to what my client was telling me, I realized that I was listening to a passionate evangelist for our retainer fee structure (he has often told me he doesn’t understand why more clients don’t take advantage of our retainer fee structure because of its cost saving alone), if not our firm and the way we do business.

Photo credit: Day 236: Attorney and client by madmolecule (licensed under a Creative Commons Attribution 2.0 license)

He also reminded me about the importance of personal contact with clients. I do much of my work remotely and it is easy to forget the tremendous value of personal contact with a client as opposed to an email. This isn’t exactly a revelation, good business people all over the world and going back in time realized this and formed deep and meaningful relationships with their clients in the process.

This all got me thinking about how I can communicate better with our clients and making better decisions about our business that help build evangelists rather than focus too heavily on the business itself. I was reminded that spending more time on making sure we have happy clients will benefit our business along the way and perhaps in ways we haven’t thought possible. I’d like to see that gulf between us and our clients shrink and even disappear. I want my clients to give us feedback and even tell us off when we do something to harm our relationship with them. No news is bad news for a social law firm based on meaningful relationships. It also seems to mean that face to face contact trumps phone contact which trumps email or IM contact when it comes to building and maintaining relationships.

Social media is about building relationships with customers using tools online. Running a social law firm is perhaps more about using those online tools to enhance relationships cultivated face to face, so to speak. Whatever it is, it is a work in progress and probably always will be.

A quick post for our fans

You may not be aware that we have a Facebook Page for web.tech.law that updates as new posts are added to the main site. If you spend a fair amount of time on Facebook then why not become a fan?

FB Page screenshot.png

facebook_64.pngIf you have any ideas or suggestions for the Facebook Page, feel free to post them or send us a message either from Facebook or from the web.tech.law site itself. I’d certainly like to use the Page more productively and any feedback would be welcome.

You can also become a fan directly from the main site by clicking on the “Become a fan” button on the right in the sidebar.

google_64.pngIf you happen to be more of a Google or Twitter person, you can also join our Google Friend Connect community using the Friend Connect panel in the sidebar to the right. I happen to have a preference for Friend Connect and I am constantly thinking about how to integrate it better into the site. One of the advantages of Friend Connect is that you can join that part of the web.tech.law community using your Google, Twitter, OpenID and AIM credentials. It is also attractive for people who are not Facebook fans and would prefer to use their existing credentials rather than create a new account.

twitter_64.pngSpeaking of Twitter, we have a Twitter account we update from time to time. Our Twitter name/handle is @webtechlaw so feel free to follow us and check out our lists of interesting Twitter users and thinkers.

Of course you are also welcome to join the web.tech.law site as a member too. We are working on ways to add more value to our members on the site. Actually, it would probably be most helpful to integrate all our communities into the site better so any suggestions will be much appreciated.

My interview on Radio Today about Web and digital media law issues and trends

I was interviewed by the Advertising Standards Authority on Radio Today a couple weeks ago about the Web and digital media law. It was a pretty broad interview and I enjoyed being on the show. If you are interested in the Advertising Standards Authority, here is a brief profile:

The Advertising Standards Authority of South Africa (also known as the ASA) is an independent body set up and paid for by the marketing communication industry to ensure that its system of self-regulation works in the public interest. The ASA has a president independent from the industry and governed by a Board.

You can find out more about the ASA on its website. I would like to thank Corne Koch, the ASA’s communications manager for inviting me to be on the show.

Ok, here is the audio from the interview. I have edited out two music tracks which were played during the show, mainly for copyright reasons: