Domain name disputes
This guide is based on UK law. It was last updated in May
2005.
Introduction
Domain names have become precious commodities as the internet
has no boundaries and no closing hours and unlike trade marks each
domain name is unique. This means there can often be some pressure
to be the first to register a domain name, and this can lead to
disputes on the "right" to register. As a result domain name
disputes can arise.
Domains and disputes are managed by ICANN (Internet Corporation
for Assigned Names and Numbers). It manages generic Top Level
Domains (gTLD) such as .biz, .com, .info, .name, .net, and
.org.
ICANN passes over the registration of domains to registrars.
There are over 1,500 accredited registrars each with their own
policies and procedures for registering, maintaining and handling
disputes regarding domains. Registrars are determined not to be
included or accept liability for any dispute. The courts have
maintained this protection for registrars.
Disputes that arise
Concurrent Rights
Simply because you have a registered trade or service mark or
been using a trade name for a lengthy period does not mean that
another person with a legitimate reason for registering the domain
and using it in good faith must give it up. Registration is on a
first come first serve basis. One example of this is the Prince
Sports case in which Prince Sports tried in vain to have the domain
www.prince.com transferred from Prince Computers in the UK.
Companies with trade marks have tried to bully legitimate
registrants out of attractive domains, this has sometimes been
called Reverse Domain Name Hijacking and damages can now be awarded
in the US under the US Cybersquatting Act for such practice.
Cybersquatting
These are the most common disputes. Cybersquatting involves the
registrant having registered a name, or names in most cases, in bad
faith to gain some commercial advantage. This usually involves
trying to sell it back to a party it knows would be interested in
having registration of the domain name for an inflated price or
using it to direct traffic to their website and away from a
competitors or damage their reputation.
Suck sites
Sites such as www.natwestsucks.com or www.stopecg.com have been
problematic. Arbitrators and the courts have been inclined to order
the transfer of the offending domain particularly if there is some
bad faith or a lack of legitimate use. Reasoning for this has been
that a non-native speaker English speaker may not disassociate the
banal and obscure suffix "suck" from the original name. Freedom of
speech arguments have been put forward but these have been rejected
because using another's identity might confuse the public into
thinking that the complainant's company is the source of the views.
One view that has been taken is that the right to complain is not
the same as the right to a domain which a substantial portion of
the public would believe was an official site.
However, it is believed that legitimate sites commenting on
public interest concerns may be able to successfully defend the
registration of such a domain. Most of the "suck" site decisions to
date have been registered in bad faith with some attempt to extract
a commercial gain. It is unclear what the decision would be for
domains like www.ithink_sucks.com or www.ihate_com. In a case
involving www.stopecg.com, a valid site airing discontent at the
business practices of the travel guide publisher European City
Guide, the domain was not transferred. Here it was contended that a
prudent person would know that the site was criticising the company
and not the company itself, therefore there was no bad faith or
disparagement of the trade mark. This highlights the problem of
inconsistent decisions that arise as decisions are not binding and
no clear precedents set.
Options in a dispute (cheapest first)
Register a different name
If the domain is not a vital domain it may not be worth
contesting. However, it would be worthwhile keeping a watch on the
registration date and registering the domain if the owner has let
the registration lapse.
Offer to buy the domain
It may be that a letter requiring the registrant to cease and
desist using the domain may be enough to prompt them to transfer
the domain for no more than out of pocket expenses. However this is
unlikely if the domain is registered for a legitimate reason or for
the purposes of extorting a large sum of money. Negotiating a price
for the domain may be worthwhile as this may prove cheaper and
quicker than any litigation or dispute resolution procedure.
A link to your site or a disclaimer
The owner of the domain may agree, probably for a small sum, to
have a link which directs traffic back to your website that has
mistakenly arrived at their site. As an alternative, a disclaimer
may be displayed on their website stating that it is in no way
connected to your website/business. This is more likely if the
registrant has not registered the domain in bad faith or is
involved in an unrelated trade which does not compete with the
complainants.
Use the ISP's terms and conditions
The user may be in breach of these, particularly if the site is
being used for illegal or immoral purposes. You could then bring
this to the ISP's attention and ask them to suspend the site.
However, the registrar cannot transfer the domain to you, although
the registrant may be more willing to transfer the domain for a
reasonable sum if they cannot use the domain.
Prioritise important domains
It may be that multiple domains have been registered in a number
of jurisdictions. It may prove costly to retrieve all the domains.
Therefore, it may be advisable to prioritise which domains you find
particularly objectionable, e.g. if the domain is likely to cause
economic harm, damage your reputation or you planned to trade in
the area where the domain has been registered.
ICANN's Uniform Domain Name Dispute Resolution Policy
(UDRP)
When registering gTLD domains the Uniform Dispute for Domain
Names Resolution Policy (UDRP) is automatically incorporated by
reference into the registration agreement. Some ccTLDs such as .mx
(Mexico) and .ro (Romania) have also opted into the UDRP.
Complaints can be filed with one of four of bodies, the largest of
which is WIPO. A maximum of 10 domain names may be included in a
single application provided that the registrant is the same for
each. Countries not using ICANN's UDRP may use a different form of
Alternative Dispute Resolution (ADR), e.g. Nominet for .uk domains,
which like UDRP are conducted online with no requirement for legal
representation. If no ADR procedure exists you may have to issue
proceedings in the relevant country, if proceedings cannot be
issued in your home country.
Advantages over court proceedings
The process is relatively quick, with decisions given between 30
- 60 days of filing the complaint. It is also reasonably cheap with
UDRP costing around $1,500 for a single panellist and $3,000 for
three panellists for between 1–5 domain names. (The Nominet expert
costs £750 plus VAT and they will be appointed within 5 days of
receiving the fee.) There are also no jurisdictional issues which
is useful as a lot of registrants tend to be from overseas. Another
advantage is that filing a complaint will also temporarily freeze
the domain and prevent it being transferred to any third party
until a decision has been reached.
Disadvantages over court proceedings
The UDRP can create uncertainty and inconsistency. This is due
to the lack of binding precedents, the fact that each decision is
based on its facts and tried by panellists from multiple
jurisdictions. For example www.barcelona.com was transferred to the
city authorities despite being used in connection with a legitimate
business, whereas www.stmoritz.com or www.mexico.com were not
transferred to the city authorities. In the latter case WIPO ruled
that the Mexican Tourist Board was guilty of reverse domain name
hijacking. However, to improve the consistency of decisions WIPO
launched a new internet information tool in March 2005 containing
precise trends and analysis of decisions to enhance the
predictability and certainty of decisions.
Decisions using the UDRP are also not binding on courts and
proceedings can be initiated after the panel has given its
judgment. Unlike court action damages and costs are also
irretrievable and arbitrations have no power to issue emergency
injunctions. The proceedings or decisions cannot be kept
confidential unlike other ADR mechanisms, despite several attempts
by complainants to achieve this. This could be an important
consideration as a company may wish to avoid adverse publicity
especially in relation to "suck" or "stop" sites.
Requirements to bring an action under the
UDRP
1. Identical to or confusingly similar. The domain in dispute
must be identical to or confusingly similar with a trade or service
mark over which you have rights. Note that this does not extend to
trade names but it does cover unregistered trade marks such as
names of well known personalities, e.g. the author Jeanette
Winterson.
2. No legitimate rights or interests. The registrant has no
legitimate rights or interests in the disputed domain. Legitimate
use is broadly when the domain is being used (or planning to be
used) in connection with a bona fide offering of goods and services
before any notice of the dispute to the registrant.
Authorised distributors or licensees have been held to have
legitimate use, with unauthorised users or those claiming to be an
official site not having legitimate interests. But occasionally the
arbitrator will give the registrant the benefit of the doubt,
particularly if the domain is a generic word or the registrant has
a reasonably plausible use, e.g. www.sting.com. Other problematic
areas of legitimate interests are fan sites for celebrities. These
are generally thought to be legitimate except where they are being
used for commercial gain.
3. Bad faith. The disputed domain must have been registered in
bad faith. An element of bad faith must be proved as UDRP does not
apply to passing off/ trade mark type cases where no element of bad
faith exists, although bad faith is interpreted widely. The UDRP
has set out a non-exhaustive list of what constitutes bad faith.
These include the following:
- diverting users to other sites by creating a likelihood of
confusion;
- if the registrant has multiple domains registered;
- an approach made to a party that would be interested in the
domain demanding money or moneys worth greatly in excess of out of
pocket expenses;
- passive holding of a domain was held to constitute bad faith if
the impression that the domain was being offered for sale was given
(the www.vivendiuniversalsucks.com case) and panels are
increasingly inferring that the domains are being held for
sale;
- offering to sell the domain on an auction site has been
construed as being in bad faith; however, on occasions the fact
that the registrant has offered to sell the domain by auction, or
agreed to negotiate a price when contacted about the dispute does
not automatically constitute bad faith for the purposes of UDRP.
This was the case in the www.avnet case where the respondent had a
long standing interest in the name; and
- being difficult to contact or untraceable has been construed as
bad faith.
Nominet dispute resolution procedure
Nominet's ADR service is administered by the Centre for Dispute
Resolution (CEDR). It will order the transfer of rights of .uk
domains provided you can show that (on the balance of
probabilities) you have rights (either "passing off" rights or
registered trade mark rights) in the name which are identical or
similar to the domain name. Much like the UDRP's bad faith
requirement Nominet will consider a registration abusive if it
creates an unfair advantage or is unfairly detrimental to the
complainant's rights. Much the same behaviour that indicates bad
faith in UDRP decisions will also constitute an abusive
registration in Nominet's procedure.
The Nominet procedure involves various stages, the first step is
a non binding, confidential and without prejudice mediation to
resolve the dispute. Failing this a decision will be made by an
individual expert. The losing party then has the option to appeal
to a panel of three experts or initiate court proceedings.
Court action
This may well be the best course of action if no bad faith is
displayed or it is difficult to prove. It should be noted that due
to the international nature of the internet, care should be taken
to ensure that the court used is the appropriate forum with the
appropriate choice of law.
Advantages over ADR
Damages or an account of profits can be awarded in court
actions. Costs can also be awarded for the proceedings. However, it
is likely that registrants may not have sufficient assets to cover
the costs of losing in court. The court also has the power to issue
injunctions against any future registrations of offending domains
or in emergencies if it is convinced there is a real risk of damage
to the claimant's business.
Disadvantages over ADR
These include the cost and length of proceedings, although clear
cases of cybersquatting can be dealt with by summary judgment thus
reducing delay and the cost to approximately £5,000.
Trade Mark infringement
Registered trade mark owners can issue a claim under the Trade
Marks Act 1994 to prevent another person using a sign in the course
of trade identical or similar to a registered trade mark and thus
exploiting the goodwill of the trade mark owner. This can also be
for unrelated uses, provided that it would be detrimental to the
character or repute of the mark or create an unfair advantage.
Problems may occur in proving that the trade mark is being used
"in the course of trade" if the domain does not have a website or
sell goods and services. It may also be difficult to prove unfair
advantage, although the increased hits on a website could be said
to increase its value. It may be easier to establish "detriment" to
the distinctive character or reputation of the mark.
Passing off
The principles regarding passing off in domain names were laid
down in the "One in A Million" case. To establish passing off three
factors must be established (the "classic trinity"):
1. That you have acquired a reputation in the name. It may be
difficult to prove reputation/goodwill if the domain is
descriptive. English courts are more reluctant to order the
transfer of domains that are less well known or not exclusively
distinctive (e.g. because it consists of a common or descriptive
name). Here the courts require some element of bad faith, e.g.
offering to sell it at an inflated price.
2. There has been a misrepresentation by the registrant which
has led to confusion by the public. This requirement is
problematic, particularly for "suck" sites where it may be
difficult to prove public confusion. It has been argued that mere
registration of the domain could amount to a misrepresentation. Any
evidence that the claimant has of confusion by the public would
greatly assist in proving confusion.
3. That it has caused damage, e.g. loss of profits or damage to
your reputation.
Defamation
If defamatory material has been posted on the website a
defamation action could be raised. However, it may be difficult to
track down the person responsible and they may have limited
resources. Although the aggrieved person could demand that the ISP
remove the defamatory material, failure of the ISP to remove it may
make them liable. (See our articles on Defamation; Liability of
ISPs)
Prevention is better than cure
There are a number of steps that can be taken to protect domain
names.
Purchase as many gTLDs and ccTLDs that one thinks is
prudent
This includes domains such as .com .net .org .biz. and any
domains in countries you plan to trade in, particularly as not all
country code domains have domain dispute resolution procedures and
expensive court action would be needed to recover the domain.
Register common misspellings
If a name is commonly spelt incorrectly it may be advisable to
register the misspellings in order to prevent typosquatters.
Register the domain as a trade mark
If you do not already have a registered trade mark it may be
worthwhile to register your domain as a trade mark. This would
obviously be a lot easier if the domain was distinctive or
descriptive, which would prevent it being registered, unless some
distinctive character has been achieved through prior use. Only the
domain needs registering and not the suffix and prefix. This would
assist in any dispute resolution procedures to retrieve the domain
name from another registrant.
Purchase new gTLDs and ccTLDs when they become available
This would include the purchase of .eu when it becomes
available. EURid, a non-profit making organisation, has been
selected to oversee the implementation of the new ccTLD .eu. A
sunrise period of four months for trade mark holders and public
bodies will take place. Some organisations are claiming to offer
pre-registration of .eu but this is not possible as at present
there is no official sanctioned pre-registration process. China's
domain .cn may be a domain worth registering considering the
potential market for goods and services in China. Steps are being
taken to offer internationalised domain names which include
characters from non English languages that were not previously
allowed. It might be advisable for a company to register its name
using the new characters or in new languages being introduced,
particularly if they have a presence where that language is
popular.
Consolidate domains into one company in the group
It is good practice for one company to have responsibility for
ensuring all domains for a group are re-registered, as the
Washington Post found out when it caused havoc with their email
system recently when they forgot to re-register www.washpost.com.
This would also prevent what is called "porn-napping" which occurs
when porn sites are set up on domain names when registrations have
lapsed, one famous case being www.tourdefrance.com.
Active monitoring
It is a good idea to actively monitor and regularly check if any
similar domains have been registered, WHOIS websites are useful for
this. There are services available which will actively monitor all
new registrations and renew all your domains.
Searches prior to registration
A search could be done to ensure that any newly registered
domains are not infringing any trade marks as a trade mark holder
may be able to order the transfer of the domain, particularly if it
is an undertaking in a similar trade/business.
