Domain Name Disputes

Lisa Patten December 4, 2023

Introduction

Your domain name is a crucial business asset. It acts as your online address and is the text that users enter when they want to visit your website. It informs users who you are and, sometimes, the nature of your business – ‘jacksplumbingsuperstore.co.uk’, for example. Given the popularity of online trading, owning a domain name that readily identifies your business is vital. If you do not have the appropriate domain name, your customers may struggle to locate you online and your profitability can suffer.

Domain name disputes arise when a business claims a third party has purchased a domain name that rightly belongs to them. Here, we consider how you can protect your brand as a domain name, how domain names differ from trade marks and how to deal with a domain name dispute.

How to protect your brand as a domain name

The starting point for most businesses’ online trading strategy is to register their brand as a domain name. When doing so, you should consider the countries in which you already operate as well as those into which you hope to expand, and secure the domain names applicable to them all. For example, all UK businesses will presumably want to secure ‘.co.uk’, ‘.com’ and perhaps ‘.net.’ However, if you plan to trade in Spain, you might also wish to secure the domain name ending in ‘.es’ and if you have France in your sights, ‘.fr’ might be a sensible purchase.

Domain names protect only the exact wording as it is registered. Accordingly, to enable their consumers to locate their website even when they have spelt the brand name incorrectly or included a typo, some brands buy domain names that correspond to common misspellings of their brand. This strategy also minimises the risk of unscrupulous third parties engaging in a practice known as ‘typosquatting’, whereby they purchase domain names based on several variations of a well-known brand’s name, with a view to directing consumers to their website instead of that of the brand, offering to sell the domains to the brand at an inflated cost, or some other dishonest reason. A well-known example of typosquatting was the domain name ‘Goggle.com’, which thousands of internet users mistook for Google and were subsequently bombarded with adverts and viruses.

How domain names differ from trade marks

A business’s domain names are often the same, or similar to, its registered trade marks. They are, however, entirely separate assets and afford different legal rights to their owners.

A trade mark distinguishes its owner’s goods and services from those of other entities. A domain name takes users to the owner’s website. Registering your brand as a trade mark does not give you an automatic right to the corresponding domain name. Trade mark registrations might, however, enable you to prevent a third party from using the trade marks as domain names if the use amounts to trade mark infringement. Similarly, registering your brand name as a domain name does not automatically entitle you to the corresponding trade mark. You need to apply to register your brand name as a trade mark as well.

What is a domain name dispute?

Domain name disputes typically arise when a business claims that a third party has purchased a domain that is the same as, or confusingly similar to, the complainant’s business or brand name. Often, but not always, the third party has done so for dishonest purposes, such as the following:

To drive traffic to a competing website.
To sell to the brand owner at an inflated cost.
To conduct scams.
To operate as a ‘gripe site’. These sites are established by disgruntled individuals, usually ex-employees or consumers, to air grievances about the brand. The sites often encourage others to post negative experiences of the business and can severely damage a brand’s reputation.

What to do when you become aware of a potential domain name dispute

Domain name issues must be addressed promptly and decisively to stem any brand damage. The types of evidence required to prove your case will depend on the action you decide to take, but the more evidence you collate, the better prepared you will be. Do not worry if you cannot obtain all of the evidence referred to below; your legal team will assist you in gathering everything you need.

As soon as you become aware of an issue, you should consider taking the following steps:

Gather evidence of the domain name owner and when they registered the domain name. Check whether the registrant has any trade marks correlating to the domain, or other relevant rights.
Gather evidence of the third party’s use of the domain name and corresponding website. If they are using the website to sell competing products, useful evidence might include dated screenshots of the webpages and test purchases of the products. If the site is a gripe site, you should take screenshots of the content.
Gather evidence of your rights. If the domain name corresponds to your registered trade mark, you should obtain details of the registration and your use of the mark. If you intend to rely on having goodwill and reputation in the name, you should gather as much evidence as possible of your use of the name along with promotional activities and press coverage.
Gather evidence of any instances of confusion and deception, such as consumers being directed to the disputed domain instead of your website.
Gather evidence of any losses you have suffered as a result of the registrant’s activities, such as lost sales.
Take legal advice. Domain name disputes can be hard fought and involve complex legal principles. Solicitors with experience in dealing with them will advise on the options available to you and help you to decide which is most appropriate in your circumstances and most likely to achieve your goals.

How to deal with a domain name dispute

A third party might buy a domain name that is the same as your brand name in good faith, for example because their brand name is the same or very similar to yours. In these cases, if ownership of the domain name is critical to your commercial operations, your only option might be to seek to negotiate a transfer of the domain name to you, usually in return for payment.

If the domain name owner has other motives for buying the domain name, several laws and procedures can be invoked to address the issue. We explain the most common ones in more detail below. Each has pros and cons, and some can only be used in specific circumstances.

Whatever process you use, the first step your solicitors will likely take is to send a letter to the domain name owner. This letter will give an account of the facts of the matter and explain why you object to the recipient’s conduct. The letter will set out the steps the recipient must take if they wish to avoid further action, and the possible consequences if they refuse to do so. Receiving a legal letter from a firm of solicitors often persuades a domain name owner to adhere to your demands, or at least opens up the lines of communication between the parties. Whilst litigation is sometimes unavoidable, it is very much a last resort, and many domain name disputes are settled through the domain name dispute resolution procedures referred to below, or by agreement between the parties.

Domain name dispute resolution procedures

The majority of domain name disputes are dealt with under the domain name’s dispute resolution procedure. Each domain name administrator has its own procedure, and you must follow the one applicable to the domain in question. Most administrators use the Uniform Domain Name Dispute Resolution Policy (UDRP), which covers top level domains including .com, .info and .org, or Nominet’s Domain Dispute Resolution Service (DRS), which relates to .uk domains. In this article, we will concentrate on Nominet’s procedure, which, in many respects, is similar to the UDRP, although there are some important differences.

What you need to prove to succeed in a complaint under Nominet’s DRS

To bring a successful complaint under Nominet’s DRS, you need to prove the following:

You have rights in the domain name. These rights might arise for various reasons, including having a registered trade mark for the domain name, or a reputation for doing business under it.
The domain name is an ‘abusive registration’. A registration might be deemed ‘abusive’ in several circumstances, including because the registrant intended to sell it to you at an increased cost or to use it to disrupt your business activities.

Some situations are particularly likely to satisfy Nominet’s criteria, such as a third party registering your trade mark as a domain name with the sole intention of selling it to you. Whatever the circumstances, you must produce cogent evidence in support of your allegations, to give your complaint the best possible chance of success. You are unlikely to be permitted to pursue the same complaint again in the future, so you must ensure your position is as persuasive as possible on the first attempt.

Remedies if your complaint is successful

The most common remedy awarded to successful complainants is the transfer of the disputed domain to them. Other remedies include the cancellation or suspension of the domain name. There is no scope for an award of damages or costs under Nominet’s DRS.

You must have clearly defined commercial goals when considering whether to make a domain name complaint. The procedure is intended to offer a quick and cost-effective way of dealing with obviously abusive registrations and to transfer the domain to its rightful owner, or to cancel or suspend it. The process is not intended to deal with complex intellectual property disputes, nor does it have the capacity to do so. If the domain name issue is part of a wider intellectual property dispute, involves considerable financial damage, or is part of an extensive campaign of brand impersonation, the process is unlikely to be appropriate, and litigation should be considered.

Trade mark infringement proceedings

If the disputed domain name is identical or confusingly similar to your registered trade mark, you may have cause to issue trade mark infringement proceedings against the owner of the domain name.

What you need to prove to succeed in a trade mark infringement claim

Trade mark law is complex, and the facts you must prove will depend on the circumstances. Generally speaking, a party can be liable for trade mark infringement if they carry out any of the following acts in the course of trade without your prior consent:

Using a mark identical to a registered trade mark in relation to identical goods and services.
Using a mark identical to a registered trade mark in relation to similar goods and services, or a mark similar to a registered trade mark in relation to identical goods and services, where there is a risk of consumer confusion.
Using a mark identical or similar to a registered trade mark on goods and services that are not necessarily similar, where such use take unfair advantage of the trade mark or damages it in some way.

Examples of domain name issues that might constitute trade mark infringement include a competitor registering your trade mark as a domain name and using it to direct consumers to their website. Gripe sites, on the other hand, are unlikely to give rise to a trade mark infringement claim since the registrant is not acting in the course of trade, but is using the domain name to criticise the trade mark owner. In these cases, the trade mark owner might consider a defamation claim if they satisfy the relevant legal criteria.

Remedies if your complaint is successful

A successful Claimant (the entity bringing the claim) in trade mark infringement proceedings is usually awarded the following relief:

An injunction to prevent the infringer from using the trade mark, including as a domain name.
Financial relief in the form of damages or an account of profits. Damages represent the Claimant’s losses resulting from the infringement, such as lost sales. An account of profits represents the infringer’s profits from the infringement, such as any sales attributable to the infringement. The Claimant can choose the method of calculation that is more beneficial to them.
Delivery up or destruction of the infringing material, including the transfer of the domain name.

Trade mark infringement claims are lengthier and considerably more expensive than making a complaint to Nominet. They are also of no use to brands who do not have a registered trade mark, or where the third party’s actions do not constitute trade mark infringement, such as in the case of gripe sites. However, where the domain name issue is part of a wider campaign of infringement, has resulted in significant harm to the brand owner, or where the infringer is unlikely to stop their actions unless compelled to do so by the Court, an infringement claim may be the best option.

Passing off proceedings

If you do not have a registered trade mark for the disputed domain name but have goodwill and reputation in it, you may be able to bring a passing off claim against the domain name owner.

What you need to prove to succeed in a passing off claim

Passing off seeks to prevent unauthorised third parties from ‘passing off’ their own goods or services as being those of another brand owner, or in some way related to that brand owner. The aim of passing off is similar to that of a trade mark, namely to protect a brand’s goodwill and reputation against impersonation.

To succeed in a passing off claim, you must satisfy the following criteria:

You have built up goodwill in connection with the relevant goods or services.
The other party is misrepresenting to the public that their goods or services are yours or are somehow connected with you.
You are likely to suffer damage as a result of the misrepresentation.

The types of domain name issues that might constitute passing off are similar to those that might amount to trade mark infringement, such as a competitor registering your brand name as a domain name and using it to direct users to their website.

Remedies if your complaint is successful

Successful Claimants in passing off proceedings are usually awarded similar relief to those in trade mark infringement claims, namely an injunction, damages or an account of profits and the delivery up or destruction of the offending material, including the transfer of the domain name.

Like trade mark proceedings, passing off claims take considerably longer and are more costly than using the Nominet DRS. Furthermore, they are generally more difficult to prove than trade mark infringement and require more extensive evidence. However, if you do not have a registered trade mark, and if the relief provided by the Nominet process is insufficient for your purposes, they may be your best option for resolving your domain name dispute.

Key takeaways

Given the prevalence of online trade and the number of domain names purchased each day, it will come as little surprise to learn that domain name disputes are commonplace. When faced with a domain name issue, you must act quickly to minimise any brand damage, having first identified your commercial aims. If your primary concern is to take over ownership of the domain, the applicable domain name dispute resolution procedure might be your best bet, due to their speed and cost efficiency. The remit and powers of those procedures are, however, fairly limited, and they are unsuitable to more complex intellectual property disputes or high value claims. In these cases, litigation might be the most appropriate option, although most domain name disputes are settled before they reach trial.

Key to a successful and cost-effective domain name dispute is ownership of a registered trade mark. We therefore recommend that you seek registration of your trade mark, trading style, brand name or company logo as soon as possible.

How we can help

At the Jonathan Lea Network, we can:

Conduct trade mark clearance searches
File trade mark applications to register a brand name, trading name, logo or other trade mark and manage the process through to registration (in the UK and overseas)
Assist in opposing registration of someone else’s conflicting mark or defending you against such threatened opposition
Assist in post-registration matters, for instance, non-use cancellation, consents, limitation of the specification of goods and services
Take action to prevent the use of your trade mark or similar mark by third parties
Defend you if you are accused of using someone else’s trade mark
Advise you in choosing an appropriate trade mark – some trade marks are legally stronger than others
Assist in the exploitation of your trade mark, for instance, licensing, sale, mortgaging, franchising, etc
Assist with the renewal of your trade marks

For all new clients, we offer a no-cost and no-obligation call of up to 20 minutes to first discuss your matter and requirements before confirming a scope of work and quote. This can be arranged by sending your details together with an overview of your matter through our contact form.

This article is intended for general information only, applies to the law at the time of publication, is not specific to the facts of your case and is not intended to be a replacement for legal advice. It is recommended that specific professional advice is sought before relying on any of the information given. © Jonathan Lea Limited 2023.