Oct 6, 2020 - by Jesse Marsh
Domain Names and IP Due Diligence
IP due diligence is generally focused on identifying and assessing the value and strength of patent holdings. In support of M&A, this can be one of the most time-consuming and complex areas of evaluation. Along with patents, comprehensive reviews of trade secrets, trademarks, and copyrights are also undertaken. Domain names also represent a key IP asset, although in many cases they are not treated with the same level of care as other types of IP are – but this can be a costly mistake if valuable domains are not transferred as part of the transaction. Usually a list is requested and provided, but lists are limited to the domains that the company knows about. Full due diligence goes well beyond that, and when a transaction is successfully completed there are steps, outlined below, to ensure the successful transfer domain name assets.
Taking Account of the Entire Domain Name Portfolio
With the introduction of GDPR and the pervasiveness of anonymous registration services, there isn’t a perfect way to get a comprehensive list of domain names owned by an acquisition target. With typical GDPR redaction however, the Registrant Organization name is still visible. Thanks to a few service providers, it is possible to pull a ‘Reverse Whois’; meaning, an Organization Name or an e-mail address can be used to search for associated domain names. Searching for exact-match trademarks as domain names is another approach for uncovering lost domains. Domains uncovered through the use of a ‘Reverse Whois tool or by searching for trademarks as domains can be presented to the acquisition target for verification. Your corporate domain name registrar should be able to assist with the process.
Working Together to Transfer
Once the transaction has completed, combining domain name portfolios can be tricky. It requires cooperation from the newly acquired company to provide authorization codes and access to domains and DNS records. If your company is acquiring the entirety of another company, you can simply request access to registrar and DNS accounts and complete this process on your own. If your company is only acquiring a portion of another company (maybe one brand or business unit), that access is not likely to be granted. In this instance, it is best to work with an intermediary to affect the transfers. Here at Brandsight, we often we interface with both sides to keep the project on track.
Tracking Progress
Once you have identified the list to transfer and you’re given the green light to get started, you may decide to build a spreadsheet and manually update things like “date transferred” or “current status”. This requires logging into various portals or using publicly available aggregators to pull all of the information together.
Alternatively, you may decide to use a technology solution such as the Brandsight Domain Name Tracker to pull back over 70 domain name and website data points, so that you can see within 24 hours if the agreed upon domains have been transferred, if they’re being used in the interim as agreed, or if they’ve been updated in any way. Before Brandsight, this type of manual analysis was outdated before it could even be completed.
While domain names may not be on the top of the IP due diligence checklist, they are valuable assets which need to be identified so that they are not lost or forgotten when the transaction completes.
The information contained in this blog is provided for general informational purposes about domains. It is not specific advice tailored to your situation and should not be treated as such.
Jesse Marsh is a Senior Sales Executive at Brandsight where he manages a North American territory. Jesse has worked in domain name management and brand protection since 2011. Prior to his existing role, Jesse worked in business development roles with Gandi and CSC.
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