Our trade mark attorneys and lawyers understand brands and the key role that your domain names play in your business. Defending them is of paramount importance.

 

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:

Domain Name Disputes

Identify

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.


Prepare

Building evidence and pre-action correspondence is the next key stage should a dispute arise.

Evidence Gathering

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.


Launch

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.


Resolve

The final stage and the point we are all likely to want to get to, is for some form of resolution. 

Settlement

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.

Contact our Domain Disputes Team

Every aspect of your brand protected at every stage of its lifecycle

icon-3

Trade Mark Registrations

Learn More
icon-3

Trade Mark Disputes

Learn More
icon2-new

Trade Mark Renewals

Learn More
icon2-new

Commerical Advice & Legal Support

Learn More

Why work with our domain specialists

We're brand specialists - so you have enforcement and protection under one roof
There are many companies that can help you with domain names. But we take a more holistic view and understand how the domain name fits within the context of your broader brand and your protection and enforcement objectives. 

We've done this before - so you're in safe hands
We're experienced at this. We've been handing domain disputes for many years and with very successful outcomes.

We have a global network - so can easily handle disputes in other jurisdictions
If we cannot directly handle a domain dispute ourselves, we already have well-established relationships with trusted advisors in all jurisdictions across the world, so no matter where the dispute originates from, we can help or engage one of our specially selected colleagues around the world.

We have the back up of a broader team of IP specialists - so you get the combined expertise of attorneys and lawyers
Our firm specialises in IP. We not only have a very experienced trade mark team but expert IP litigators on hand in house that we can work with should we need them. 

We take a commercial approach - so clarity of strategy is a primary driver
We understand the bigger picture and the commercial importance of your domain names to your business and so this strategic approach is a primary driver in the way we work with you.

Contact our Domain Disputes Team

 

Andy King Feb-21

 

 

Talk to our domain dispute experts

Being involved in a domain dispute is challenging and complex. We know how to deal with these situations and will help you navigate the situation.

Not sure who to talk to?  Please get in touch and I'll be happy to help.

Andy King, Domain Disputes Expert & Trade Mark Attorney 
andy.king@mewburn.com

 

 

 

How Mewburn Ellis is working with domain rights holders


  • Knives manufacturer - We’ve acted for the claimant, a reputed knives manufacturer, in domain name proceedings before Nominet. We prepared arguments in support of why the domain name, in the hands of the registrant, was an Abusive Registration and caused consumer confusion. JLP for OLFA corp - 6677793
  • Financial institution - We’ve represented the claimant, a financial institution, in the course of pre-action correspondence, proceedings before the World Intellectual Property Organization Uniform Dispute Resolution Policy (WIPO UDRP) and a takedown complaint before the domain name registrar GoDaddy. Our efforts were ultimately successful as WIPO and GoDaddy ordered that the disputed domain names be transferred to our client. JLP (and Ed) for Capital Group Companies, Inc. – 7237787
  • Venture capital firm - We’ve assisted the claimant, a venture capital firm, in a dispute against a sophisticated Cybersquatter. Legal proceedings were threatened as an alternative forum to Nominet as this particular Cybersquatter had successfully defended Abusive Registration actions by third parties in the past. The dispute was ultimately resolved in pre-action correspondence by the client purchasing the domain. We arranged for our client to use an escrow service to broker the deal as set out in the agreement between the parties. Caroline Hart, Creandum – 7645047
  • AI tech company - We’ve defended an AI technology company in a trade mark dispute, which included use of a domain name. The claimant threatened trade mark infringement proceedings and sought the cancellation or transfer of the domain name as relief. We resolved the dispute in pre-action correspondence. Caroline Hart, L’Explore – 7335680
  • Pharmaceutical supplier - We’ve represented the claimant, a pharmaceutical supplier, in a trade mark infringement dispute, in which the defendant registered and used a number of country-specific domain names, identical to our client’s trade mark, to divert customers to their business abroad. We advised our client about the enforcement options available, including domain name complaints, and our client opted to threaten trade mark infringement proceedings in the country with which the domain names are associated and where the infringer’s business is based.
  • Dance company - A member of the team, in a previous role, represented the claimant, a dance company, in relation to a dispute involving trade mark infringement. The defendant was an Academy school, which offered courses in dance, and rebranded to a name very similar to the claimant’s, including use of a domain name that incorporated the claimant’s trade mark. The dispute was resolved in pre-action correspondence.
  • Financial institution - One of our solicitors, in a former role, handled a dispute against a Cybersquatter, who orchestrated a financial scam. The Cybersquatter effectively passed themselves off as the claimant by using a cloned website, the domain name of which was similar to the claimant’s, to offer fake financial services. The website was taken down, as a consequence of filing a complaint with the domain name registrar GoDaddy
  • Popular restaurant chain - One of our experts, in a previous role, assisted a well-known British restaurant chain with resolving a dispute in relation to the use of a Greek domain name, which was ultimately transferred to them.
  • Domain name acquisition - A member of the team, in a former role, facilitated domain name acquisitions, including helping interested buyers to identify domain name owners. One particular buyer wanted to acquire an unused domain name registration that had already been registered by a third party as it matched the buyer’s new brand. Our team member liaised with IP investigators to identify the registrant and make an offer to acquire the domain name anonymously.   
  • Domain name watching service - Our experts have experience in advising in relation to potentially conflicting domain name registrations in the UK and elsewhere, as part of a domain name watching service. Following notification of a conflicting domain name, we alert our clients and, where necessary, provide advice on next steps, which may include conducting further investigation, contacting the registrant and providing a recommendation on the most appropriate strategy to secure the domain name.

     

 

Laptop open in darkYouGov survey finds that nearly a quarter of businesses have been a victim of cybersquatting


A recent survey conducted by Mewburn Ellis, in conjunction with YouGov, revealed that nearly a quarter of respondent organisations have been – or currently are – the victim of cybersquatting, the practice where an entity sets up an internet domain name that is identical or similar to that of an existing brand, with the aim of profiting from pretending to be that brand. 

This surprising and worryingly high occurrence of cybersquatting issues suggests that companies and other brand-owners need to have a plan in place for dealing with cybersquatting and other similar domain name issues should they ever arise.

Find Out More

Testimonials & Recent Directory Quotes

“I have worked with Mewburn Ellis for over 20 years, initially for patent advice, but in more recent years for significant trade mark advice. I have worked with many professional advisers in the process of building and developing  Bioline Reagents Ltd into a successful molecular biology company operating around the world, and Mewburn Ellis has proven to be an extremely reliable partner with sound advice, complete clarity in complex matters and fair pricing.”

MARCO CALZAVARA

Founder Bioline Reagents Ltd

“It has been great working with you over the past 4 years, and thank you for your friendship, professionalism, and taking such a personal interest in our Company. We think it is pretty special, and it is really nice to work with other professionals who take the time to get to know us and understand what differentiates us. Your knowledge of our trademarks and registrations is second to none…”

RICHARD MORGANS

Onvu Technologies AG

"Mewburn Ellis LLP, one of the most established firms in the market, boasts a comprehensive trade mark prosecution offering and fields a busy domestic and international practice, a reflection of the group's office network across the UK and Germany. The team also offers a complementary litigation department and is increasingly active in customs seizures."

LEGAL 500

Legal Directory

“Thank you for all your sterling advice and assistance, in pushing us forward at the right pace, with the lowest possible costs – so that we can grow faster together. It’s been most refreshing for us!”

WHEY FORWARD HEALTH INDUSTRIES

Law & Practice Library

EUROPEAN PATENTS - THE BASICS

Veriviva strarbis vita, senaticumderunu statior terobse nenatuastuus essis rena, quam, perfirte, sesessis, nos, quo vicavo

Learn More

JOINT APPLICATIONS ORCO-OWNERS OF IP

Veriviva strarbis vita, senaticum derunu statior terobse nenatuastuus essis rena, quam, perfirte, sesessis, nos, quo vicavo

Learn More

MARKING OF PATENTED PRODUCTS IN THE UK

Veriviva strarbis vita, senaticum derunu statior terobse nenatuastuus essis rena, quam, perfirte, sesessis, nos, quo vicavo

Learn More

Latest News & Insights