Clarkslegal LLP - Solicitors in Reading and London

Legal Updates

Domain Name Disputes

09 March 2010 #Dispute Resolution


What`s in a domain name?

Online business can be very valuable.

Therefore, maintaining access to your global market place is essential. What can you do if business is being diverted to someone else`s site and how does it happen?

What causes disputes?

The line between domain names, trademarks and ownership can become blurred, particularly as domain names are by nature global.

A domain name is often used to identify a source of online information to the extent that the domain name itself becomes used as a trade mark. The owner may develop common law rights in the domain name and may be able to subsequently register the domain name as a trade mark.

How do disputes arise?

  • Businesses fail to register all potential web addresses, e.g. .com, .biz, .org - prevention is better than cure!
  • A domain name could infringe the trade mark or common law rights of another company, even without knowledge of that party - different parties in different countries (or even within the same country) may have competing legitimate interests in the same domain name.
  • Domain name piracy or cybersquatting - deliberate infringement of intellectual property rights. In such instances a party will deliberately register a domain name which they know another party or business will want with a view to selling the domain name to that party or using the domain name to malign that party.
  • Purported legitimate use, e.g. by a local brand.

A central factor in a domain name dispute is the intention behind the registration of a domain name. If there is honest concurrent use of a name the first to register may be entitled to keep the domain, particularly as the traditional domain name allocation policy was to award domain names on a ‘first come first served` basis.

This risk has been abated somewhat as registration of new domains is often now based on a "sunrise period" during which only legitimate trade mark owners can register a domain name followed by registration which is open to all after the "sunrise period" has expired.

Resolving disputes

The Internet Corporation for Assigned Names and Numbers (ICANN) deals with many registration issues and disputes relating to domain names.

ICANN`s Uniform Domain Name Dispute Resolution Policy (UDRP) is a mandatory procedure for all ICANN-accredited registrars and most generic top-level domains such as .com, .net and .org. Providers of the UDRP celebrated its 10th anniversary in 2009.

The procedure is essentially a formal arbitration between the domain name owner and the party challenging their registration. There are three providers of UDRP, the most popular of which is WIPO, which has administered over 16,000 cases filed under the UDRP in the last 10 years.

For a complainant to win an action, he must prove the existence of three elements:

  • The holder`s domain name is identical or confusingly similar to a trade mark or service mark of the complainant (or in which the complainant has rights)
  • The holder has no rights or legitimate interest in the domain name, and
  • The domain name has been registered and is being used in bad faith

If a complainant is successful the registration of the domain name can be cancelled or transferred to them.

Nominet UK

ICANN has delegated responsibility for country specific domains to national registries in those countries. The relevant body in the UK is Nominet UK which deals with domain names ending .uk.

Nominet UK runs its own Dispute Resolution Service (DRS) Procedure which is applied as part of every contract for registration of .uk domains. The DRS Procedure is an informal mediation - if it is not successful an expert will be appointed to make a decision on the dispute.

The expert can order that a domain name is transferred (if the complaint is made out) or that no action is taken (if it is not). The expert can also order that the domain name is suspended (that means that it is prevented from working but is not deleted) or cancelled (deleted) but this is unusual.

Litigation

In some cases it may be more appropriate to go to Court than to rely on dispute resolution procedures. For example, where action is required urgently to protect a brand, a trade mark or a reputation it is possible to apply to the Court for an injunction. This can be obtained much faster - within a few days - although the costs are likely to considerably exceed those for following the ICANN or Nominet UK procedures above.

Further the Court can order more than just a transfer or cancellation of a domain name - they can order one party to pay damages to the other as compensation for trade mark infringement, passing off and potentially defamation as well as a proportion of their costs in bringing the action if they are successful.

Litigation will be a possibility where a domain name:

  • Infringes your trade mark, or
  • Amounts to actual or threatened passing off, or
  • Is considered an "instrument of fraud" (depending on the circumstances).

Protect your brand and your domain name

Prevention is always better than cure.

It is important to take steps to reduce the likelihood of competitors registering domain names including your business name or branding, for example:

  • Register the business name as a domain name. Register around the name (using .biz, .net, etc) and consider whether it is appropriate to do so across a range of countries and/or internationally. 
  • Register the business name as a trade mark (including any associated signs or logos) either in the UK, Europe or internationally. 
  • Keep an eye out for the release of new domains, for example ICANN has recently approved internationalised domain names for non-Latin script languages, such as Arabic and Chinese scripts.
  • Use the mark and the domain and renew the trade mark registration every 10 years
  • Police the mark / domain name:
    • Search sources such as the internet to identify infringers
    • Take action against infringers (or you may be found to have acquiesced in the infringing use, or that your mark has lost its strength)
    • Monitor your competitors
    • Beware - threats of proceedings are actionable by the recipient in certain circumstances

If you would like to discuss any of the issues above, please contact Andrew Quirk or Julia Holt.

Practical Example 1

The domain paulsmith.com was registered by an individual named Paul Smith for his blog. He has retained this domain name despite the potential for the fashion brand Paul Smith to make a claim (although the brand has registered paulsmith.co.uk).

Practical Example 2

Phones4u Ltd & Anor v Phone4u.Co.UK & Ors. In 2006, Phone4u was found liable for passing off as Phones4u had been advertised quite extensively by the time that the Phone4u domain was registered and therefore there was goodwill in the brand.

Further, as the name Phones4u was protectable in passing off, the attempt by the owner of Phone4u to sell the domain to Phones4u once he was aware of the other brand was sufficient to amount to an instrument of fraud.

However there was no trade mark infringement as the Phones4u trade mark was registered in certain colours and therefore the trade mark was limited to the words in those given colours - it did not protect the words alone which were the basis for the domain name.

Clarkslegal, specialist Dispute Resolution lawyers in London, Reading and throughout the Thames Valley.
For further information about this or any other Dispute Resolution matter please contact Clarkslegal's dispute resolution team by email at disputeresolution@clarkslegal.com by telephone 020 7539 8000 (London office), 0118 958 5321 (Reading office) or by completing the form on this page.

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