Many companies consider their domain names to be vitally important and very valuable commercial assets. They are often heavily promoted and used to signpost customers to both ecommerce platforms and websites where more information can be obtained about the company or brand. If you find yourself in a dispute situation you will need domain dispute experts to help you navigate what can be a very complex and potentially damaging area.
We are very experienced in handling these types of disputes. We can help when another party sets up an internet domain name that is identical or similar to your existing brand or name, with the aim of profiting from pretending to be your brand, including so-called ‘cybersquatting’, or else to try and divert business away from you.
Steps typically involved in domain name disputes:
Making sure you're on the front foot and monitoring and identifying issues quickly will always stand you in good stead should a dispute arise. We offer the following services to help you identify any possible infringements.
Domain Name Watch Services
Simply finding out about a third party’s registration and use of conflicting domain name can be part of the battle. A domain name watching service is a regular and timely check for newly registered domains that are identical or very similar to the brand, name or trade mark being watched. If a domain name watching service detects a relevant domain, we will initially write to you with details and some brief comments to enable you to quickly decide what action to take.
Trade Mark Clearinghouse
The Trade Mark Clearinghouse (‘TMCH’) provides a mechanism for trade mark owners to register and protect their rights against ICANN’s new gTLD program. It is a centralised database of trade marks that are registered, court-validated, or protected by statute/treaty. Registration gives brand owners access to a ‘Sunrise’ registration period for new gTLDs before the domains are available to the general public. It also provides a system of alerts to brand owners and third party domain registrants that notifies about the existence of a registered brand in TMCH or the registration of a domain name that matches the trade mark record. We can manage the TMCH registration process for clients, and then forward notifications when any are received.
Building evidence and pre-action correspondence is the next key stage should a dispute arise.
Unfortunately, many domain name owners have a tendency to take down their own websites after a complaint has been made, thereby making ‘after-the-event’ evidence gathering much more difficult. Ahead of sending any pre-action correspondence and so putting them on notice, we can work with our client to fully document the adverse party’s activities under the disputed domain name for use as evidence later if proceedings become necessary. This evidence may need formalising in some way depending upon the jurisdiction of the dispute. We can also conduct searches of case law and decisions in previous trade mark and domain name contentious proceedings involving the adverse party, in order to try to determine if they are known for dubious dealings in domain names for example.
Pre-Action Advice & Support
We can prepare and send pre-action correspondence to third party domain name owners, with demands for surrender or transfer of domains. We can also make demands and complaints to domain name registries relating to the disclosure of the details of objectionable domain name’s registrant, which is more of a problem post-GDPR.
You are now in a position to file your dispute at the appropriate place. There are many different options, including those outlined below, depending on your specific situation.
Top Level Domains - ICANN UDRP
We can prepare, file and prosecute ICANN UDRP (‘Uniform Domain-Name Dispute-Resolution Policy’) cases at various providers including WIPO, the National Arbitration Forum and the Czech Arbitration Court. We can also represent domain name registrants who face UDRP actions filed by other parties. These proceedings are for disputes involving generic top-level domains (‘gTLDs’) such as .com, .net or .org and certain other TLDs.
.uk Country Code Domains - Nominet DRS
We can also prepare, file and prosecute DRS (‘Dispute Resolution Service’) complaints at Nominet in relation to .uk country code top-level domains (‘ccTLDs’), as well as handle defences or responses to such proceedings on behalf of domain name registrants, including appeals from the first instance Nominet Expert Decision. Furthermore, we can also represent clients in the mediation step of Nominet cases.
.eu Domains - Alternative Dispute Resolution at EurID ADR
We are also able to prepare, file and prosecute ADR (‘Alternative Dispute Resolution’) proceedings in relation to .eu domain names, plus represent domain registrants that want to contest a complaint. These actions can be filed at the Czech Arbitration Court or at WIPO.
Other Domains such as .org or .info - URS Complaint
We can prepare and file URS complaints for our clients. A URS (‘Uniform Rapid Suspension’) complaint is a lightweight, inexpensive, fast-track process for resolving clear violations of trade mark rights. URS complaints are mostly used in relation to new gTLDs, such as .lawyer for example, but can also apply to other domains notably including .org, .info and .biz. They are not meant to replace the UDRP and other dispute procedures, but rather to complement them. Successful URS complaints only cause a domain name to be suspended, not transferred or cancelled. They can take as little as one week to resolve. URS complaints can however be more difficult to substantiate than a UDRP action; they must also be based on word mark registrations alone and evidence of use of the mark must be provided.
Foreign Domain Names e.g. .io - Foreign Domain Name Disputes through WIPO and foreign IP firms
We can also represent complainants and domain name registrants in relation to disputes relating to various ccTLDs. An example is .io domains, the unrestricted ccTLD for the British Indian Ocean Territory, which have gained a reputation for use among the tech industry because “IO” or “I/O” is commonly used as an abbreviation for “input/output” in computer science. The .io domain name dispute resolution service is provided by WIPO and is a slightly modified version of the UDRP. Additionally, we also have experience of managing domain name disputes in foreign jurisdictions through instructing a network of trusted IP firms to provide critical local legal advice and support. We can also instruct foreign IP firms to handle UDRP and URS disputes where English is not the language of the proceedings.
Court Litigation in the UK, Germany and Elsewhere
Sometimes a domain name dispute cannot be resolved outside of court proceedings. That could be because the domain name at issue is part of wider proceedings, or perhaps because a complaint at court is the only option (where there is no equivalent to UDRP, DRS or ADR complaints). It could also be because of an opinion that a complainant’s case may be strongest at court, or else an appeal of sorts from an UDRP, DRS or ADR decision. Whatever the circumstances, we can help with all aspects of litigation in the UK and Germany. We can also coordinate litigation in foreign jurisdictions. A key example are .de domain disputes in Germany, where taking action at court is often required and where our German trade mark specialists are well placed to advise our clients.
The final stage and the point we are all likely to want to get to, is for some form of resolution.
We can advise about and broker settlements with third party domain name owners, before then drafting settlement agreements and/or assignments and then tracking the execution of the settlement undertakings, including domain name transfers. As unsavoury as it may sometimes seem, paying the other party to acquire the disputed domain name can sometimes represent the quickest, simplest and most cost-effective solution to the dispute. An agreement also gives certainty of outcome. We help our clients to understand the value of these kinds of options, which they may not have previously considered.
Correlation with Other Disputes
It is also worth remembering that domain names and domain name disputes can often be part of wider disputes between two (or more) parties, perhaps involving trade mark oppositions or infringement proceedings. They must therefore be kept in mind when pre-action correspondence, alternative dispute resolution (ADR) or settlement negotiations are considered or embarked upon. Our experienced attorneys and lawyers can consider how domain names may fit into the overall picture.