Domains

If someone registers a domain name that is identical or similar to your brand and uses it in a way that misleads customers (and business away from you), damages your reputation or is otherwise harmful in some way to your business then you may have grounds to act.

Key evidence includes details of any trade mark registrations (evidence of brand ownership), proof of brand use and examples of the contentious domain name being used to confuse or divert customers away from your business in a manner that is demonstrably egregious.

This depends on the domain GTLD in question. For .com and .uk domains, options include filing a complaint under procedures such as the UDRP or Nominet DRS. It is often difficult to negotiate directly with a domain name registrant, particularly if their details are hidden at the WHOIS register. In some cases, pursuing legal action may be a last resort, providing the identity of a perpetrator is known.

Resolution times vary but can often be completed in a matter of weeks or a few months, depending on the process chosen and complexity of the case.

If you succeed in a dispute, the usual outcome is that the domain is transferred to the successful complainant, but this is not always the case. In some cases, it may simply be cancelled.

Most dispute resolution processes focus on the control of the domain name rather than awarding damages. You would not be recompensed in the event of a favourable decision. Court proceedings may be necessary if damages are sought, but these are expensive to pursue and rarely worth it if the only goal is to seek financial recompense.

There is a fairly substantial official fee involved when filing a UDRP complaint. To submit a claim, a facts-based statement of case must be drafted, which can take a considerable amount of legal expertise because the case and evidence to support it must be submitted in accordance with strict requirements. In general, the cost to pursue a claim would be around the £3000 mark. For many, this is often a small price to pay considering the reward.

Act quickly. Gather evidence of your rights and how the domain is being used, then seek advice on the most effective dispute route. Check where the contentious domain name is hosted and contact the hosting provider. They may have an abuse claim you can submit through their platform, although keep in mind that hosting providers are usually very reluctant to act on domain name abuse reports unless there are special circumstances.

It can sometimes work, but in many cases a structured dispute procedure is safer and more effective, particularly where bad faith is involved. Again, it may be impossible to identify the owner which rules out any form of contact. These days, the identities of registrant owners are almost always privacy-protected on public domain registers.

The choice depends on whether the domain is a .com/.org etc. (UDRP) or a .uk domain (Nominet DRS). Each has specific rules and procedures.

While you can file a domain name complaint yourself, a specialist advisor or attorney in this field will improve your chances of success immeasurably. This is especially so in more complex or contested cases.

Registering your trade marks and domain names in advance is the best prevention. Ongoing monitoring also helps catch problems early.

Disputes are usually handled under international systems such as the UDRP, which apply worldwide. Local legal action may also be needed in some cases. The more trade mark rights you have in different territories the better, but one territory can often be sufficient.

We have handled many domain name disputes for clients and this is a core area of our expertise. We can provide you with an initial assessment and provide an estimated chance of success. Sometimes, a domain name dispute is only one point of attack against an infringer, but it can be a successful one where other actions may fail. If your business is facing a situation as a consequence of a domain name being registered and used for the purpose of damaging your business then talk to us today.