In a typical domain dispute, there will be two entities involved both of which think that they should be entitled to a particular domain name.
Often there is a conflict between Domain Rights and Trademark Rights. If one party has a particular domain name but another party owns trademark rights in that name, there is likely to be a problem. Such Domain Disputes can be resolved through the courts or the appropriate Domain Name Dispute procedure. Domain Name Law does not provide a simple answer for all such disputes such that the Domain Rights holder always defeats the trademark owner or vice versa but there are certain key factors in domain law that typically point towards the solution.
Stolen domain names
From a legal perspective, this is one of the simplest scenarios in domain name law. If a third party has without any right whatsoever managed to transfer a domain name from your account to its own, then it has infringed your domain rights and you should be able to recover it by contacting the ISP and proving your case. Where fraud or other forms of criminal behaviour are involved, the police should be informed. Whilst that may not provide a fast method of recovering the stolen domain name, it may help to capture the perpetrator and avoid recurrence.
Cybersquatting
This is one of the most common scenarios in domain disputes and Domain law is now well established in this area. In the leading cybersquatting case of BT v One in a Million [1999] FSR 1 the court decided that it was not legally acceptable for a cybersquatter, ie an entity without relevant domain rights, to register a domain name which the public would naturally expect to be associated with a third party.
This can overlap with the scenario whereby a domain name is diverted to the website of a third party competitor who seeks to trade off the goodwill of the legitimate brand owner. However, typically cybersquatting and this form of activity are quite distinct. The former involves someone who simply buys domain names with a view to holding the proper rights owner to ransom whereas in cases of diversion activity, it is almost always a competitor trying to benefit from the goodwill established by the legitimate company but usually without seeking to sell the domain name to that company.
Passing off
This is probably the busiest area of activity for the typical domain name lawyer. Domain name disputes often pivot around the issue as to whether a company has overstepped the mark by registering a domain name which reflects the trading name or product name of one of its competitors. Another similar form of dispute may arise where a company uses meta tags or pays for sponsored ads which incorporate the competitor’s branding. Each case is assessed on its facts but if a trading entity is taking unfair advantage of a competitor’s branding and/or marketing efforts, the courts will usually find in favour of the competitor and order a transfer and often award damages or order an account for profits.
Other issues
Very often the fundamental issue is what to do if you find that someone has registered a domain name which is the same or very similar to your corporate name or another domain name that you use for trading purposes. (I am using “you” here, which can equally be interpreted as “your client”).
Did the other party register the name before you registered yours?
If the answer is yes, your position is probably very difficult, especially if the domain name in question is a .com, .net or .org as for such domains, you need to prove not only that the use of the domain is in bad faith but also that it was registered in bad faith. However, with a .co.uk and certain other domains, this is not so crucial as bad faith use alone is sufficient.
Does either party own a registered trade mark?
Whilst not necessarily decisive, ownership of a registered trade mark which, excluding the suffix, eg .com or .co.uk, is identical to the domain name in question, is like an ace in a game of cards and vastly improves your chances of success. If, on the other hand, it is the alleged cybersquatter who owns the registered trade mark, your chances of success will be lower and you might find yourself on the wrong end of a claim for cybersquatting or reverse domain name hijacking.
Is the name generic?
If the domain name is generic, for example gardencentre.com, you will have far more difficulty establishing your entitlement than if it is of a proprietary nature, eg markjacobsgardencentre.com. This does not mean to say that there is no chance of obtaining transfer of a generic domain name but you will have to convince the adjudicator that the name has become synonymous with you. For example “bodyshop” is a generic name that has become proprietary by association.
Does the name include a celebrity’s name?
If the domain name in question corresponds to a celebrity’s name, the chances of procuring a transfer are greatly enhanced. For example, modesty aside, if someone registered simonhalberstam.com, I would have a very good chance of obtaining transfer, especially if it were being used to provide legal services. If, however, the domain name were being used for a fan site (chance would be a fine thing) things could become more difficult especially if the owner were not making any commercial profit from the website.
Does the name include a well-known brand?
Since the One in a Million case in 1998, the position has been very positive for well known brand owners and the courts and dispute resolution bodies give short shrift to speculative, parasitic registrations of this nature. The questions will always be whether your brand is well enough known and whether the registrant was seeking to trade off your goodwill or just happened to register a similar or identical name without knowing of your existence.
Can you prove bad faith?
Whether you go through the dispute resolution procedures provided for domain name disputes or you go through the courts, a key factor will be whether you can prove bad faith on the part of the registrant. With certain categories of domain name, eg .com, .net and .org, you need to prove bad faith both at the time of registration and in respect of the use being made of the name. However, with others, notably .co.uk, it is sufficient to demonstrate bad faith in the way the domain name is being used, irrespective of whether the original registration was made in good faith or bad.
How long has this been going on?
If the domain name which you are concerned about was registered a long time ago, you may face difficulties as the courts or adjudicator may infer that your business cannot have been severely affected as otherwise you would have done something about this far earlier. What is a long time ago? Although every case is different, if the registration in question was made more than two years ago, your case is beginning to look weaker. However, if the registration was made a long time ago but the site only became active recently, that should help.
Dispute resolution policy
The Uniform Domain Name Dispute Resolution Policy (UDRP) is the main dispute resolution procedure for domain names. It governs the majority of top level domain names, notably .com, .net and. org. The main entity through which UDRP disputes are adjudicated is WIPO in Geneva. There is usually one panelist assessing the dispute but one can increase this to three in appropriate cases. Although there are associated costs, in certain instances these will be justified as this may enhance chances of success.
Two well known cases
Protecting famous names and luxury brands: dandg.com
Dolce & Gabbana s.r.I. v. Independent Digital Artists D2010-0813, 25 August 2010
Dolce & Gabbana recently took action against the registrant of dandg.com under the Uniform Domain Name Dispute Resolution Policy (UDRP) claiming that the registration infringed its registered trademarks in the term D&G.
If the domain name in question had contained the full Dolce & Gabbana name, the prospects for the registrant would have been minimal. However, the registrant managed to convince the panel that it had legitimate business plans to open a marketing company under the name and produced evidence of this in the form of a logo, stationery and social media marketing through Facebook and Twitter as well as supporting statements from three potential customers.
If the UDRP provided more opportunity for scrutiny of evidence the registrant might have been unsuccessful.
Usually, an approach to the brand owner by the registrant soliciting an offer to buy the name is fatal to the registrant as it evinces bad faith. However, in this case it was not as it was not necessary for the panel to consider the bad faith issue in any detail.
As a result of this, Dolce & Gabbana failed to satisfy the UDRP panel that the respondent, Independent Digital Artists had no legitimate interests or rights in the name.
There are some key lessons that come out of this decision for both brand owners and registrants of domain names which might be associated with such brands.
Do not approach the brand owner seeking to sell the domain name – this is usually taken as indicative of bad faith and often fatal.
In cases where a brand owner wishes to challenge evidence of legitimate usage by the registrant, court proceedings may be a better option than UDRP.
If you do register a brand name of this type, your chances of retaining it are far higher if you have a legitimate business plan that does not enter the brand owner’s sector of activity.
Trademark registration is a key element of brand protection but not always sufficient to succeed in domain name proceedings
Legitimate use of famous names in gripe sites: ihateryanair.co.uk
Ryanair Limited v Robert Tyler D00008527, 7 October 2010
Nominet, the UK domain name registry has decided in favour of Ryanair in a case relating to the ihateryanair.co.uk domain name. The decision entails the transfer of the domain name from the registrant to Ryanair. Ryanair won because the registrant had made a small commercial gain from the website which, according to the Nominet expert, took unfair advantage of Ryanair’s name as it was that name that had drawn visitors to the website.
However, the registrant has now transferred the content of the website to a different domain name, ihateryanair.org. The rules governing .org domain names are different from those governing .co.uk and Ryanair would face a more difficult challenge if it decided to initiate proceedings.
The risk for a trademark owner in such cases is that unless it obtains an injunction through the courts, the registrant can simply transfer the content to a multiplicity of other domain names.
It remains to be seen whether Ryanair will challenge the .org registration.
Simon Halberstam is a partner with Kingsley Napley. He specialises in all aspects of contractual and litigation matters relating to IP, IT and e-commerce, acting not only for IT clients such as software houses, ISP’s, domain name registrants and web designers, but also for many corporate and general business clients who need specialist assistance in this particular field. He is sole legal advisor to the IBM CUA.
He also maintains weblaw which contains information on many aspects of IT and internet law and is a joint author of Tolley’s Domain Names – A Practical Guide.
