Uhthoff, Gómez Vega & Uhthoff - Mexico
For those who have fallen victim to cybersquatting, there are options available to recover the desired domain name.
There is a common belief that obtaining and managing a domain name is a time-consuming and difficult job. However, given that domain names are how customers and clients find your business – not to mention the goods and/or services that you offer – on the Internet, adequate protection should be considered an essential requirement.
We have seen several instances in which high-profile brand owners publicised that they were launching new goods or services, yet failed to register the relevant domain name in advance.
Unsurprisingly, third parties then seized the opportunity to move in and register the domain names, forcing the brand owners to spend a considerable amount of time and money trying to negotiate an assignment or even entering into dispute resolution proceedings. In some cases it proved impossible for the brand owner to gain control of the desired domain name and the brand owner had to find an alternative – which often lacked the same commercial impact. This situation is easily avoided and a good illustration of why it is crucial to register any relevant domain names before advertising new goods and/or services.
Fortunately, Mexico has a straightforward system for registering and managing domain names.
Registry’s evolving role
In Mexico, anyone can apply to register a domain name in the country-code top-level domain (ccTLD) ‘.mx’. Domain names in the following second-level domains (2LDs) can be obtained by the following:
- ‘.com.mx’ – anyone;
- ‘.org.mx’ – non-profit organisations only;
- ‘.edu.mx’ – educational or research institutions only;
- ‘.gob.mx’ – offices pertaining to the Mexican government only; and
- ‘.net.mx’ – Mexican internet services providers only.
In 1989 educational entity Instituto Tecnologico de Estudios Superiores de Monterrey (one of Mexico’s most prestigious universities) became responsible for managing domain names in Mexico. In 1995 it created a specialised company to assume responsibility for Mexican domain names – Network Information Centre Mexico (NIC MEXICO).
NIC MEXICO is mainly in charge of managing and developing the ‘.mx’ ccTLD, along with other important tasks such as providing information and registry services for ‘.mx’ domain names, assigning IP addresses and maintaining all databases concerning domain names (WHOIS).
Originally, NIC MEXICO was in charge of managing, administrating and recording all domain names in Mexico. However, it has since created several divisions, each with different roles in managing and developing the ‘.mx’ ccTLD, as well as all related 2LDs. For example, previously if a party wanted to obtain exclusive rights over a domain name, it would register the domain name with NIC MEXICO. Now an applicant must contact one of NIC’s sub-divisions – AKKY.MX – instead.
Today there are approximately 700,000 domain names registered in Mexico – including TLDs and second-level domains (2LDs).
Figure 1: Registered domain names in Mexico
Registering a domain name
As previously mentioned, it is not difficult to obtain or maintain a domain name in Mexico. A potential applicant need only visit AKKY’s website – www.akky.mx – and conduct a simple search to ascertain that the desired domain name is available. Such a search will provide potential applicants with the option to choose domain names in the ‘.com.mx’, ‘.edu.mx’ and ‘org.mx’ 2LDs, among others.
If the domain name is available, the potential applicant need only pay the corresponding fees, choose the validity of its registration and provide the necessary contact details in order to register it. If the desired domain name has already been registered by a third party, the potential applicant can find details of this third party and decide either to choose a different domain name or take legal action if it believes that its rights are being infringed.
With this in mind, domain name registrants are advised to follow the recommendations below in order to maintain their registrations:
- Provide full, detailed and updated contact details.
- Periodically review and update the contact information for your domain name, so that if someone wants to contact you, they can do so easily.
- Remember the domain name’s renewal date – if the fees are not paid on time, registrants risk losing the domain name, which then becomes available to any third party.
Correctly following these steps should enable domain name holders to avoid any conflicts or problems.
In addition, it might be advisable to perform a trademark search for elements contained in the domain name of interest. This should help to avoid a situation where a domain name is vulnerable to a cancellation action based on a prior IP right owned by a third party.
Most national IP offices have online search engines or trademark databases, where anyone can enter and perform a clearance search. These databases are designed to help all parties to avoid inadvertent IP violations.
We have seen several instances in which high-profile brand owners publicised that they were launching new goods or services, yet failed to register the relevant domain name in advance
Resolving disputes over ‘.mx’ domain names
Disputes involving domain names are subject to proceedings before an independent and impartial group of experts (mediators) at the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre, or directly by the local domain name administrator (depending on whether the violation involves IP rights). This enables parties to settle disputes out of court.
If a party considers that its rights have been violated by the registration of a ‘.mx’ domain name, it should provide evidence of this before REGISTRY.MX, the sub-division of NIC MEXICO which is responsible for managing domain names in Mexico. Upon notification of a possible IP rights violation, REGISTRY.MX will suspend the domain name in question and prevent any changes from being made to it until the proceedings are resolved.
However, if the domain name registration involves an IP rights violation, the dispute should be handled and resolved by WIPO. Once an application to commence the resolution procedure is filed, WIPO will inform REGISTRY.MX, which will then suspend the domain name and prevent any changes from being made to it until the proceedings have been resolved. The latest figures from WIPO state that to date, approximately 190 disputes have been filed in Mexico concerning domain names in the ‘.mx’ ccTLD.
A plaintiff can request that WIPO intervene in a domain name dispute only where:
- the domain name is identical or confusingly similar to a registered trademark, registered commercial slogan, appellation of origin or reservation of rights (in accordance with the Copyright Law) in which the plaintiff has rights;
- the owner of the disputed domain name has no rights or legitimate interests in the domain name; and
- the domain name has been registered or used in bad faith by the registrant
Once the plaintiff initiates dispute resolution proceedings, it should send electronic and physical (via courier) copies of the relevant documents to WIPO. All subsequent communications between the parties should be sent electronically.
Once WIPO receives the complaint, it will notify the defendant, issue an application number and set out a 20-day term for it to file a response. If no response is filed within this period, the expert or group of experts will proceed to study the matter and issue a resolution within the next 14 days.
Rights holders in Mexico are advised to register any domain names in which they are interested before publishing or advertising new goods or services, in order to avoid a third party registering the name. Rights holders may also wish to consider registering domain names that contain misspellings of the primary domain name, in order to block a third party from obtaining rights in a confusingly similar domain name.
Once the desired domain names are registered, owners should ensure that they provide full, detailed and updated contact details and review these regularly. They should also take care to remember the next renewal date of their domain names: if no renewal fees are paid, the domain name may be lost and become available to any third party. NIC MEXICO allows domain name holders to renew automatically, which would seem a wise move.
Carolina Ponce is an associate at trademark specialist firm Uhthoff, Gomez Vega & Uhthoff SC. She holds a law degree from the Universidad Iberoamericana, Faculty of Law, 2008 and is a member of the Mexican Association for the Protection of Intellectual Property. Ms Ponce is fluent in Spanish, English and French.