Domain Name Disputes Guide
Everything you need to know about domain name disputes in the UK
What is a domain name?
Every one of the billions of websites in existence has a name made up of two or more ‘domains’. They do so in order to mask the internet protocol (IP) address – the strings of numbers which identify the location of websites and devices on a particular network, or the internet in general. Much the same way that telephone numbers identity individual mobile or landline phones connected to the telecommunications network.
IP addresses allow other computing devices connected to the same network to locate and exchange information with the device identified by the address: for example, by viewing a website through a browser like Apple Safari or Google Chrome.
Because IP addresses are made up of numbers, they are not particularly memorable. By contrast, domain names – for example, microsoft.com, apple.com or marksandspencer.com – provide a more memorable, human-friendly face for website IP addresses. Each is essentially a descriptive or memorable label for an individual website that indicates ownership, control, subject matter or the type of business conducted or advertised on the site.
Domains were introduced in the 1980s and onwards as the numbers of computers attached to the embryonic internet rapidly increased and the need to categorise websites became more urgent.
Each domain name is made up of two elements – the top level domain (TLD), which is three letter extension following the full stop, and the second level domain.
TLDs fall into two categories: generic top level domains (gTLDs) and country code top level domains (ccTLDs). As the name suggests, the latter are specific to particular countries – for example ‘.co.uk’ or ‘.de’ for Germany. Meanwhile gTLDs are so-called because they do not relate to limited specific locations and instead categorise the site – very broadly – by its content.
In the domain www.microsoft.com, ‘.com’ is a generic top level domain, while ‘microsoft’ is the second level domain – so called because it is the most specific, legally protectable element, the part that will intersect with trade marks and other intellectual property.
Because second level domains precede top level ones, the latter are sometimes also referred to as domain name extensions.
Widely used gTLDs include:
.biz (for businesses)
.com (for commercial enterprises)
.org (for organisations)
.com was one of the earliest gTLDs introduced and remains the most widely used.
Domain names are registered with officially accredited registrars in return for various fees. They often also offer related internet services such as web hosting. Registrars receive their authority from the Internet Corporation for Assigned Names and Numbers (ICANN). This is a non-profit organization responsible for maintaining the system used to allocate domain names, as well as the registries that record these.
Accredited registrars are entirely independent and operate according to different procedures and policies. Generally, they are also not legally obliged to intervene in domain name disputes.
Organisations or individuals who register domains are known as ‘registrants’. Doing so gives them the right to exclusive use of the domain name for a defined period of time. Registrants are entitled to prevent parties from attempting to interfere with that right.
Registration involves entering into a contractual relationship with the registrar. Domain name registration is distinct from trade mark registration – one does not imply the other – although possession of a particular trade mark may help the owner to recover similar domains that have been registered by a third party.
Possession of domain name does not, however, imply an automatic right to prevent any use of a similar name by a third party – that requires an entirely separate registration / legal process.
What is a domain name dispute?
With so much business conducted online in the 21st century, domain names have real commercial value: the internet has no closing time and a lot of businesses depend on it. With thousands of new domain names registered every single week, the pressure is high and disputes are routine. Every single domain name has to be unique.
Typically, in domain name ownership disputes, a ‘complainant’ claims ownership of an internet domain name that has been registered by someone else. Generally, this is because the domain name is similar to the complainant’s trade mark or trading name. And often the registrant has used it to target the complainant in some way.
Typical situations include the domain name in dispute having been:
- Registered by a disgruntled ex-employee
- Used by a competitor to drive traffic to a competing website
- Registered by a reseller of the trade mark owner’s products
- Used for low quality pages featuring advertisements
- Offered for sale to a third party
- Used for email ‘phishing’ or other scams
Cut your risks
The old maxim that prevention is better than cure applies here: with some relatively simple housekeeping measures you can cut your risk of becoming embroiled in domain name problems in the first place.
Register multiple variations
Whenever possible register multiple possible variations of your domain name, with different extensions and common misspellings. For example, if you are the owner of the domain www.greenthumbgardening.co.uk, you should also register obvious alternatives such as www.greenthumbgardening.com and www.greenthumgardening.co.uk.
Redirect visitors from these variant domains to your official site. Not only will this hoover up stray would-be customers looking for your business, it will also lessen your chances of being involved in a domain name dispute by leaving fewer variations open to exploitation – or ideally none at all.
It is not necessary – or even possible – to register every possible variation of your domain, but registering the most common is certainly a worthwhile investment. If you operate in more than one country, focus on those in which you do the bulk of your business or where is an especially high risk of third parties registering similar names that could confuse customers.
Trade mark your domain name
Consider registering your domain name as a trademark if you have not already done so. This should be possible if the domain name has distinctive qualities or a history of use. Registration will strengthen the measures open to you in the event of a dispute.
Monitor new domain variations
Keep an eye out for the regular release of new domain name extensions and consider whether or not to purchase variations of your domain using these. This could be an appropriate move if your business is expanding into new markets for example, and it will help you to protect your interests and guard against fraud and phishing.
Non-Roman alphabet options are increasingly available and these may be worth investigating.
Make someone responsible
Establish clear responsibility within your organisation for the active monitoring of third-party domain names. Make sure you are aware of any deceptive or potentially confusing registrations as soon as possible, and know when your own current registrations are due to lapse. You may prefer to hire a third-party service to undertake this for you.
Reclaim your domain
There is no one size fits all solution to domain name problems. The outcome will be very dependent on the individual circumstances of each case.
Understandably, most trade mark owners would rather not take such matters to court unless they really have to. The good news is that alternative methods of domain name dispute resolution can help you reclaim most kinds of domain name – provided you meet certain criteria. These domain arbitration procedures are included in the contracts that registrants sign up to when they register the domain name. This means they will be legally bound by them.
Typically, filing a domain arbitration case locks the domain name. Then, if you win, the registrar of the domain name must transfer the domain name to you. Unfortunately, it’s rare for such procedures to result in the payment of compensation or legal costs (though some do). But, usually, transfer of the domain name is the main objective in these cases anyway.
What you have to prove varies depending on the kind of domain name in dispute. Generally, you have to show that you own a trade mark, either registered or unregistered. The latter can be established by a track record of using the name. Some procedures also deal with other rights, such as personal names and geographical terms. Usually you also have to provide evidence that the registrant acquired and/or used the domain name in bad faith. The conjunction is important as procedures that use ‘and’ are more restricted than those that use ‘or’!
Typical domain name ownership disputes
Domain name registration generally operates on a first come first served system. This means that users of a specific trade mark do not have automatic entitlement to a similar domain name, especially if the registrant can show that they registered it in good faith and have made legitimate use of it since then.
There have been examples of trade mark owners trying to bully domain name registrants into surrendering desirable domains: a practice dubbed ‘reverse domain name hijacking’.
Cybersquatting and ‘passing off’
The term ‘cybersquatting’ usually refers to the common practice of registering a domain name purely in order to gain some commercial advantage over the trade mark owner – selling it back at an inflated price, for example.
Alternatively the cybersquatter may intend to use the domain to confuse customers into logging onto the website of a competitor who is seeking to profit from the commercial reputation or goodwill of the trade mark owner. Legally the latter practice is called ‘passing off’: attempting in some way to imitate –someone else’s trade mark for commercial gain.
These are sites established in order to complain about or criticise a company, using a domain name that incorporates its brand name or at least suggests this. Such sites often encourage visitors to post complaints about bad service, faulty products and similar issues. Gripe sites can be damaging to the reputation of targeted companies who are typically keen to remove them.
Domain name arbitrators are usually sympathetic to such concerns. and They are more likely to order the transfer of the domain name if there is evidence of bad faith (such as trying to obtain some form of commercial gain) or the possibility of genuine confusion, for example where the domain name consists of the exact trade mark without any qualifier indicating that it is a gripe site.
But if the website owner can demonstrate that the site legitimately hosts complaints and there is no reasonable chance of confusion, then they may mount a successful defence.
Preparing a domain arbitration case
Prepare by conducting thorough background research. Find out as much as you can, for example:
- When the disputed domain name registration was made – and by whom.
- Whether, when and how it has been actively used
- Whether the registrant holds any registered trade marks related to the domain name in dispute. These are likely to be similar to yours if so.
- Whether the registrant of the disputed domain name has been involved in previous disputes. If so, this could suggest a pattern of bad faith behaviour.
Useful reference sites
- nominet.uk – for.co.uk and .uk domains
- https://www.wipo.int/amc/en/domains/ and https://www.adrforum.com/domain-dispute – for .com and other “gTLD” domains
- The Internet Wayback Machine – for individual site histories
- The UK Intellectual Property Office – for trade mark ownership details
The first was established by ICANN in 1999 and is known as the Uniform Domain Name Dispute Resolution Policy (UDRP). This covers the oldest gTLDs such as .com and .net, as well as various newer ones, including .app, .shop, and .xyz.
UDRP also applies to some country codes. For example, these include .co (Colombia) and .ro (Romania). Other country codes, however, have their own nominated registries. As mentioned above, Nominet is the registry for .co.uk and .uk domain names. It also operates a distinct dispute procedure. Visit this page for full details on UDRP.
Nominet Dispute Resolution Service
In the UK, the other important arbitration procedure is Nominet’s Dispute Resolution Service (DRS). As mentioned above, this applies to .co.uk and .uk domain names, so for most .uk domain name disputes, trade mark owners turn to the DRS.
The official DRS Policy first requires anyone launching a complaint to prove that they have rights to the domain name. Specifically they have to show that they have ‘rights in respect of a name or mark which is identical or similar to the domain name in question’. The name or mark need not be officially registered.
They must also show that the name registration to which they’ve taken exception is ‘abusive’.
Choose your priorities
It is not uncommon to find that multiple versions of disputed domain names have been registered across several jurisdictions. This can mean taking action in each country: an expensive prospect. We advise prioritising the most sensitive: the ones that are most likely to damage your reputation or business in your main countries of operation.
Sending a letter or email
A legal letter or email to the registrant of the disputed domain name may be all it takes to convince them to return or transfer the name at minimal cost to you.
Only proceed to arbitration or court action if you really have to. It all comes down to the extent of the damage that you think the domain name is causing you and/or how important it is for you to get hold of it.
You may be able to reach an acceptable compromise. The domain name owners might, for example, agree to add a link redirecting any confused visitors back to your site and a disclaimer making it clear that the site is not connected with or endorsed by you, the trade mark holder.
In some cases simply buying the name back from the registrant may be both cheaper and quicker than taking action, whether that is arbitration or legal proceedings.
This may seem an unpalatable idea or unjust but it is an option worth considering if costs are a major concern. There is a risk of encouraging further cybersquatting.
Involving the registrar / host
If the registrant is using the domain name to operate a website, they may be in breach of their registrar / host’s terms and conditions, especially if the site is clearly illegitimate. In urgent cases, it might be worth alerting the registrar or host and asking them to consider suspending the site. Though of course they will not be able to transfer the domain name to you.
Taking no action
If your budget is limited and the disputed domain is not crucial to your business, taking no action may be the right decision. You may want to keep a discreet eye on the renewal date, however, and acquire the name if the current owner lets it lapse.
Going to court
Occasionally, going to court is the right thing to do, though it can be expensive. The case may be very urgent or serious. Or you may specifically be seeking damages and/or repayment of your costs, neither of which is possible under the UDRP or DRS (see above).
Courts can issue binding injunctions prohibiting use and/or requiring transfer of certain domains – and can do so at short notice if there is a serious risk of damage to your brand or a significant loss of profits. However, do note that country-specific jurisdictions limit the reach of legal rulings, so choose your country carefully if your case involves more than a single country.
Another factor to consider is whether or not the registrant really has the resources to pay up if they lose in court.
We often help registrants whose domain names are being claimed by someone else. Be careful not to do anything in the meantime that may prejudice your position. This might include corresponding with the complainant or changing your website.
If you talk to us, we’ll advise you on the risks and costs, and devise a strategy to help fend off the claim with the least possible expense incurred.
My domain name has been taken – help!
First, take steps to preserve evidence that may be needed later. This might include a date-stamped screenshot illustrating infringing use of the domain name. In our experience, registrants sometimes change websites when they know there is a dispute, so it’s best to pocket key evidence immediately.
Customer confusion can often be relevant too. Make sure you safely keep any communications from customers that show they’ve been confused by the disputed domain names. Keep the contact details of customers who mention this on the phone.
If you intend to chat with us about the case, then it might be best to hold off on sending any communications to the registrant, at least until we’ve spoken. There’s a risk of inadvertently saying something that may be unhelpful in a later case. Also, alerting the registrant to the dispute may make it more difficult to collect key evidence.
Speak to us
If you speak to us at Adlex Solicitors, we’ll talk you through the options available and the associated costs. We’ll advise you on the best strategy for reclaiming a domain name – and will help you do so without the need for formal recovery action if at all possible.