What to do if your firm’s internet domain name has been taken?

Internet domain names are a vital part of a business’s ability to market itself and its specialist services. Choosing how to be identified on the internet is not always easy, however, as domain names are assigned automatically on a first come, first serve basis so others may have already registered the one you want and believe you are entitled to. Also, a name may conflict with intellectual property rights that existed before the internet became popular.

A common source of disputes is “cybersquatting”, where a third party has registered a domain name in order to sell it on at a far higher price than the initial registration cost or to use it to attract customers to other websites in which it has an interest.

Nominet, which maintains the register of .uk domain names, has a dispute resolution service (DRS) which settles such complaints though mediation or, in about a third of cases, by using one of its independent experts. If the expert’s decision is challenged, the complaint is reconsidered by three independent experts.

Policy and compliance with the DRS is part of the registration contract for .uk domain names. If you become involved with the DRS, as complainant or respondent, it is essential to prepare well and get the complaint or response right first time.

The parties cannot speak directly to the expert. The expert considers the documents sent by them but does not have access to information disclosed in the mediation, which is confidential. The expert decides the case and issues a written decision, which usually directs that the domain name be transferred to the complainant or that no action be taken.

Although experts want to be consistent they are not bound by precedent and each dispute is decided on its own merits. Failure to supply sufficient evidence is the most common reason for losing a case. Whatever the facts, your case is only as good as the complaint or response put forward by you.

A complainant has to prove that the domain name, in the hands of the respondent, is an abusive registration

The complainant must prove to the expert on the balance of probabilities that :

• it has rights in respect of a name or mark identical or similar to the domain name; and
• that the domain name, in the hands of the respondent, is an abusive registration.

Rights include, but are not limited to, those enforceable under English law. However, a complainant is not able to rely on rights in a name or term that is wholly descriptive of its business, such as “wesellgreatpumps.co.uk”.

The main purpose of the rights test is to ensure that the complainant has a proper interest in the domain name; it may seem unfair that whoever first registers the domain name does not also have to demonstrate this.

To show that the domain name is an abusive registration, the complainant must prove:

• that at the time the registration or acquisition took place, it took unfair advantage of or was unfairly detrimental to the complainant’s rights (which may be impossible if the company did not exist at the time the name was registered); or that
• it has been used in a manner that took unfair advantage of or was unfairly detrimental to the complainant’s rights, such as linking to a rival’s website.

The complainant must provide the expert with both elements of proof: that it has rights and that the domain name in the hands of the respondent is an abusive registration. One company that succeeded on both scores was the Danish pumpmaker Grundfos. For details of how it secured rights to its .uk domain name, see http://www.nominet.org.uk/digitalAssets/1036_grundfospumps.pdf).

Original print headline - No name, no gain