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Domain Name Disputes
Here are some FAQs which we often encounter and which we hope you’ll find helpful:
What is a domain name dispute?
Most often this term is used to describe a dispute in which a complainant believes it is entitled to obtain an internet domain name (i.e. a web address) that was registered or acquired by someone else. Generally, this is because the domain name is similar to a trade mark or trading name owned by the complaint and, often (though not always), it has been used in a manner to which the complainant objects.
This can involve a multitude of circumstances, e.g. domain name registered by a disgruntled ex-employee; domain name used by competitor to drive traffic to a competing website; domain name registered by reseller of the trade mark owner’s products; domain name used for parking pages with advertisements and/or offered for sale; domain name used for email phishing or other scams. Etc etc…
How can an owner of registered trade mark or other rights recover a domain name?
Understandably, most trade mark owners would rather not to go to court unless they have to. The good news is that alternative dispute mechanisms have been set up to enable recovery of most kinds of domain names – provided that you come within the applicable criteria. These domain arbitration procedures are included in the contracts which registrants sign up to when they register the domain name – and so they are bound by them.
Typically, a domain name is locked when you file a domain arbitration case and then, if you win, the registrar of the domain name will be required to transfer the domain name to you. It’s very rare for such procedures to award you compensation or legal costs (though some do), but usually transfer of the domain name is the main objective in these cases.
What you have to prove varies depending on the kind of domain name / dispute mechanism but generally you have to show that you own a trade mark (either registered or unregistered based on your use of the name) – though some procedures allow other rights as such personal names and geographical terms. Usually you also have to establish, based on evidence, that the registrant acquired and/or used the domain name in bad faith. The conjunction is important as procedures which use “and” are more restricted than those which use “or”!
What are the main kinds of domain resolution mechanisms?
The first one, set up by ICANN in 1999, and known as the Uniform Dispute Resolution Policy or “UDRP” covers “gTLD” domain names such as .com, .net etc as well “new gTLD” domains such as .app, .shop, .xyz etc. See more information about UDRP complaints.
In the UK, the other important one is Nominet’s Dispute Resolution Services or “DRS” which applies to .uk domain names. See more information about Nominet’s DRS.
My domain name has been taken – what should I do?
First, take steps to preserve evidence which may be needed later – such as a date-stamped screenshot illustrating infringing use of the domain name. In our experience, registrants sometimes change websites when the registrant knows there is a dispute and so it’s best to “pocket” key evidence immediately.
Customer confusion can often be relevant too. Make sure you keep safely any communications from customers which show that they’ve been confused by the disputed domain names – including contact details of a customer who mentions this in a phone conversation.
If you’re going to chat to us about the case, then it might be best to hold off sending any communication to the registrant until we’ve spoken. Apart from the risk of inadvertently saying something which may be unhelpful in a later case, alerting the registrant to the dispute may make it more difficult to collect key evidence – as mentioned above.
If you speak to us, we’ll talk you through the options and (fixed costs) and advise you on the best strategy for obtaining the domain name – without you having to start formal recovery action if at all possible.
Someone is claiming my domain name – what should I do?
We often help registrants whose domain names are being claimed by someone else.
If you intend to chat to us, then we suggest you avoid doing anything in the meantime which may prejudice your position – such as corresponding with the complainant or changing your website.
We’ll advise you on the risks / costs including a strategy to fend off the claim at the least expense.
What expertise do Adlex have in domain and cybersquatting disputes?
We are very heavily involved in this area. Our principal, Adam Taylor, has been a domain name panellist adjudicating on domain disputes for many years. We’ve also acted for parties (both complainants and registrants) in hundreds of domain dispute cases. See more information about our domain dispute legal expertise. You can click here for a free legal opinion.