Given the reliance we all place on the internet nowadays, websites are one of the key ways to market and sell products and most businesses own at least one internet domain name.
Before settling on a trading name, savvy entrepreneurs will always check to see that the corresponding domain name (in some format or another) is available so that their online presence is easy to find by customers (e.g. www.lawbite.co.uk !). Although a domain name dispute can be handled quite easily through Nominet (who look after .uk domains) many domain name cases are far more complex and contested which is where expert business legal advice and the effective use of trademark protection can be invaluable.
As the number of businesses grows and the domain name space becomes increasingly crowded and competitive, the value of domain names has sky-rocketed. Legal proceedings in domain name cases have also sprung up left, right and centre, with high prices changing hands for the ownership and use of sought after domains.
These disputes tend to arise either as a result of genuine competition (where both parties have a legitimate interest in the domain), or via the ‘cybersquatting’ scenario (where somebody calculatingly registers a domain in bad faith to disrupt another’s business or sell it back to them at a higher price).
Domain dispute process
If you face or want to initiate a domain-related dispute, the process you have to follow depends on the generic top-level domain (gTLD) at stake. Responsibility for .uk domain names lies with Nominet, whose dispute resolution service (or ‘DRS’) provides for a very efficient and cost-effective way to resolve .uk domain name disputes as an alternative to litigation.
As well as the complainant showing evidence that they have ‘rights in respect of a name or mark which is identical or similar to the domain name’ (see more below), they must also show the registration or use of the domain name is an abusive registration. This is done by proving that the domain name either:
- Took unfair advantage of or was unfairly detrimental to their rights at the time of registration or acquisition; or
- Has been used in a manner which took unfair advantage of, or was unfairly detrimental to their rights.
Helpfully, the Nominet DRS Policy sets out a non-exhaustive list of factors which may be evidence of an abusive registration, which includes the fact that the domain name was registered in order to:
- sell, rent or otherwise transfer it specifically to the complainant (or a competitor) for more than the buyer paid for it
- block the Complainant from using it
- unfairly disrupt the Complainant’s business
- confuse or be likely to confuse internet users into believing that the domain is somehow connected with the Complainant
The standard of proof required is judged on the balance of probabilities (i.e. more likely than not). In addition to submitting the evidence required above, among other things the claimant must also specify whether they are seeking to have the domain name transferred, suspended or cancelled.
The respondent will then be given an opportunity to respond and submit their own supporting arguments to rebut the claim. Certain evidence may help to show that the registration is not abusive, including arguments that they have been commonly known by the name, the domain name is generic or descriptive and is being used fairly, or that they have made preparations to use the domain in connection with a genuine business offering.
Following receipt of all the evidence, both sides then go through a confidential and free mediation process. If no settlement is reached between them, they can refer the matter to an impartial and independent expert (for a fee) who will decide on the matter. The decision (which may be appealed) is ultimately published on Nominet’s website.
Proving you have the ‘right’ to the name
As mentioned above, the complainant must start by showing that they have the necessary rights in the name. There are various ways to do this, including having a licence to use the name or owning unregistered rights where you have built up a sufficient reputation in that mark. Mere registration of a company name at Companies House does not necessarily give rise to any rights for this purpose. More often than not though, the best way to prove rights in a mark is by having a registered trademark. Simply owning a domain name does not help to protect your brand either, so trademark protection is vital on all these fronts!
Making an effective trademark application itself needs to be very well considered – we recently provided you with 5 tips to get your trademark application right.
How we can help
If you have any questions about trademark registration or domain name disputes, LawBite is here to help.
Once trademark applications have been submitted, there is no going back in terms of either amending the mark itself or adding any additional goods/services. For this reason, it is crucial to get it right from the get-go. Here at LawBite we offer very competitive fixed rates to take you from pre-application right through to trademark registration, view our suite of trademark products. Avoid getting in a pickle with your trademark application and feel free to get in touch for further details today!
To speak to the author of this article, Laura Symons, or to begin the trademark application process please do enter an enquiry or call us today on 020 7148 1066 and speak to a member of our friendly Client Care Team.