DOMAIN NAME DISPUTES GUIDE

Introduction to Domain Names and the Registration Process

In this internet age where commerce and transactions are frequently conducted online, and a physical store front is no longer a requirement to provide services or sell goods to customers, it is frequently a businesses website which functions as the portal through which its customers obtain information about the business, as well purchase its goods and services. 

Reserving a domain name which features your business name or brand is therefore critical to trading or marketing your goods or services online since it is the name that people use to find a website; for example, www.apple.com, and www.lidl.co.uk, or our domain name www.insigniatrademarks.co.uk.

A domain name is comprised of the second – level – domain, which is typically the protectable element, for example, the word apple in the domain www.apple.com. The string at the end of the domain name after the full stop is the generic top-level domain in the case of .com, and .org. There are also country code top-level domains, .co.uk being a typical example.

When selecting a second – level – domain name, you should choose a name which customers will recall with ease and associate with your business. In this regard it is very common for businesses to choose a domain name which comprises both the trading name and most prominent trademark, examples of this would be www.apple.com and www.tesla.com.

Whether a generic top-level domain or a country code-top-level domain is selected depends on where the business and its customers are located. For example, a sports supplement company with UK customers and which is based in the UK should consider registering a co.uk domain name as a priority.

Prior to registering the domain, thorough checks should be conducted to see if there are earlier rights which could pose a threat to use of the domain name in the future.  In particular, careful thought should be given to conducting trademark searching to avoid conflict with an existing rights holder, as the holder of a registered trademark may be able to stop your use of the domain name in the future.

At this stage, it would also be advisable to register the second – level – domain name as a trademark if possible. This is because a trademark registration is generally the best way of enforcing your rights against a third party, and as rights in a trademark date from the filing date, you also want to try and avoid a competitor obtaining a trademark which pre-dates your own.  You should also be aware that a domain name registration does not confer the right to stop another using the name, while a trade mark registration does. Accordingly, failure to register your trade mark could enable a later user to obtain a trade mark registration and then stop your use of the domain name and trade mark.

Once you are satisfied that the relevant checks have been completed, it is time to register your domain name with the relevant registrar.

Domain Name Disputes

As domain names are valuable commercial assets, it is common for disputes concerning the entitlement to a particular domain name to arise.  In such cases, several legal areas commonly intersect.

A typical example of a domain name dispute would be where a third party deliberately registers a confusingly similar domain name with the intention of trading off another parties’ reputation. This is commonly referred to as Cybersquatting.

 Other domain name disputes could be less clear cut, such as those concerning the right to a name where both parties have arrived at the name independently and are operating legitimate businesses. In cases concerning legitimate concurrent use of a domain name, it is likely to prove more difficult to have the domain name removed than it would be in a more straight forward case of cybersquatting.

Another typical domain name dispute could concern gripe sites, or review sites, whereby a domain name is registered for the purpose of criticising the products or services of a particular business. While it is not always possible to take effective action in such cases, use of a gripe site could cross a line when the registrant is deriving commercial gain from the website, airs false allegations, or confuses the customers of the business.

Domain Name Dispute Resolution Services

 If you have an objection to another party’s use of a particular domain name, you may want to bring a domain name dispute with the relevant registrar. If your claim is successful, you can have the offending domain name cancelled, suspended or transferred to yourself.

Nominet is the domain registry which manages co.uk, .org.uk, .sch.uk, .me.uk, .net.uk, .ltd.uk and .plc.uk domains. If a domain name dispute involving a .uk family domain arises then it may be possible to bring a claim with Nominet.

To bring a successful claim with Nominet it is necessary for the claimant to show as follows: –

• That it has rights to the domain name- rights in a domain name could constitute a trade mark registration which is identical or confusingly similar to the domain registration which is being objected to. It would also assist if the trade mark registration was filed before the disputed domain name was registered.
• That the domain against which the claim is being brought is an abusive domain registration – A domain registration is abusive where it took advantage of or was unfairly detrimental to your rights at the time of registration or acquisition or where it is used in a manner which took unfair advantage of or was unfairly detrimental to your rights.

Further guidance on Nominet Dispute Resolution Services can be found here: https://www.nominet.uk/domain-support/uk-domain-disputes .

ICANN which is an abbreviation for Internet Corporation for Assigned Names and Numbers, established the Uniform Domain-Name Dispute-Resolution Policy (UDRP), which is the dispute resolution process which applies to all generic top level domains, such as .com, .net, and .org. This dispute resolution service also applies to certain country code top level domains.

In order to succeed in a UDRP claim, it is necessary for the claimant to demonstrate that :-

• The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• The registrant does not have any rights or legitimate interests in the domain name; and
• The domain name has been registered and the domain name is being used in “bad faith”.

Further guidance on ICANN and the UDRP can be found here: – https://www.icann.org/resources/pages/help/dndr/udrp-en

Domain Name Disputes – Practical Steps

 What follows are practical steps that you should take to avoid domain name disputes, or to place yourself in the best possible position should a dispute arise: –

Perform Searching and Register your Trademark. Before adopting a particular domain name, perform a thorough search of both the internet and the relevant trademark registers to find out whether there are other parties who possess earlier rights- Trademark Law is a complex area, so ideally you would instruct a Trademark Attorney to conduct the relevant searches on your behalf. Searching goes some way to reducing your risks of being embroiled in a domain name dispute in the future, as you will have a better understanding about what use others are making of the name at the outset.

Once searching has been performed and you are satisfied to an acceptable degree that your proposed domain name and trademark is free for use, you should register it as a trademark. A trademark registration serves as notice to other parties that you have rights in the trademark. A trademark registration is also generally the easiest way of showing that you possess rights in a particular trademark. This is useful, as for example, to bring a successful claim with a domain registry to have a domain removed, you will have to prove that you have rights in that particular domain name yourself.

Register multiple versions of your domain name. By registering multiple versions of your domain, including common misspellings, you go some way to reducing the risks of cybersquatting. If the variations of your domain name are not available, then it is simply not possible for another party to register them. You should also consider registering a number of generic top-level domains and country code top-level domains, particularly if your business will be operating in a number of territories.

Monitor the marketplace. Conduct regular internet searches and searches of the relevant trademark register to determine whether there is misuse of your domain name taking place.

Enforce your Intellectual Property Rights. If you become aware that another party is using a domain name that is confusingly similar to your own or is trying to register a confusingly similar trademark for example, you should obtain legal advice and consider whether you are able to enforce your rights.

In this regard, if you have a trademark registration, you should also keep track of any notifications that you receive from the trademark office which alert you to the publication of similar rights, and consider taking further action against these applications if necessary.

While the action to be taken turns on the specific circumstances in question, it is often better to proactively enforce your rights so other parties do not gain a foothold in the marketplace, as this could prove detrimental to your business in the future.

 There is a Domain Name Dispute, what now?

 Register your trademark. If you have not already done so, once becoming aware of the possibility of a domain name dispute, you should give careful thought to registering your domain name as a trademark. This places you in a stronger position if the domain name dispute escalates, and further, you would hopefully pre-empt a trademark filing by the other party.

Write to the other side. It might be possible to resolve matters without taking formal legal proceedings. Accordingly, you should consider having a Trademark Attorney write to the other side setting out your position. This could involve a request for the other party to voluntarily return the offending domain name to you within an agreed time period.

Consider bringing a formal Domain Name Dispute. As outlined, there are different dispute resolution procedures depending on the domain name in question. In broad terms, if you can show that you have earlier rights and that the domain registration is unfairly causing damage to your business, you may be able to bring a dispute resolution claim to have the disputed domain name suspended or transferred to yourself.

Consider bringing a trademark infringement claim. If you possess rights in a trademark, you may be able to bring a trademark infringement claim against the owner of the offending domain.

 Here at Insignia IP Services we are specialists in resolving domain name disputes. If you require legal advice in connection with a domain name issue, please get in contact HERE for a free consultation with a legal specialist in this area.