Domain names are big business. A domain name is the address by which web users can find your website – essentially your website name. It may also form part of your email address. As we all know, the use of the internet has exploded in recent years and so domain names have become valuable intellectual property assets and where there are valuable IP assets, there are also IP disputes. So, when do disputes tend to arise in relation to domain names?
Common domain name dispute scenarios
Conflict often arises in relation to trade marks and other IP rights being used in domain names. Issues may arise in the following ways:
- A party may register a domain name that they know another business may like and then seek to either sell, rent, or otherwise transfer the domain name to them or a competitor (typically at an inflated price). Alternatively, they may register the domain name to simply block the other party’s access to the domain name, or even actively use the website to disrupt the other business. This is known as cybersquatting.
- Separate businesses may both have a legitimate interest in a domain name, for example where the domain name relates to a particular product that they both sell or where they share a business name which can happen, for example, when the business is named after the owner.
- Large companies that set their sights on a domain name may be willing to pursue it at length – this is known as reverse domain hijacking. Even where the domain owner (known as the registrant) has a legitimate right to the domain name, the larger entity may use their resources to force the owner to give up their rights.
So, if you do find yourself with a potential domain name dispute on your hands, what can you do?
How to handle a domain name dispute
Your first step should be to seek advice from your solicitor, as the approach you take may depend on the nature of the dispute. However, it is often the case that you will need to follow your domain name administrator’s dispute resolution procedure. There are various domain name administrators and each one has their own dispute resolution procedure, though these processes will be similar.
Nominet is one of the main administrators for .uk domain names, so we’re going to take you through the process under their Dispute Resolution Service (DRS).
Nominet domain name dispute resolution process
There are 5 stages to the process:
- Stage 1: The complaint and the response
- Stage 2: Mediation
- Stage 3: Expert decision
- Stage 4: Appeal
- Final stage: Closure
Find out more on each stage below.
Stage 1: the complaint and response
The party raising the complaint (known as the complainant) submits a complaint form through Nominet’s online services tool, setting out the details of their issue and requesting a remedy. A copy of the complaint is sent to the registrant (known as the respondent) and any other relevant end user.
Complainants must prove two elements in order to secure a remedy:
- That they have ‘rights in respect of a name or mark that is identical or similar to the domain name’ – for example, by showing they have a registered trade mark which is being used in the domain name; and
- That the registration or use of the domain name amounts to an ‘abusive registration’, meaning that it took unfair advantage of, or was unfairly detrimental to, the complainant’s rights at the time of registration or acquisition, or that it has been used in a manner which took unfair advantage of, or was unfairly detrimental to, their rights.
The complainant needs to be able to show that they currently have rights, but it is useful if they can also show that they had those rights at the time the domain name registration was completed. For example, it is more challenging to argue that a registrant knowingly obtained a domain name to take unfair advantage of the complainant, if the complainant didn’t have any rights at the time the registration was made.
The respondent has 15 working days to submit a response and may either agree to the requested remedy or challenge it and set out their reasons for doing so. As mentioned earlier, it is worth bearing in mind that sometimes two parties may both have grounds to claim they have rights to a particular domain – for example, where they have the same business name. The respondent may well be able to use this fact to argue that they did not make an abusive registration.
A copy of the response is sent back to the complainant, who in turn has 5 working days to comment.
Following the introduction of the General Data Protection Regulation (GDPR), registrant details are not made publicly available (unless the registrant has consented to them being made available), so if you wish to know the details of the registrant (for example, if you think it may help your claim in some way), you should submit a ‘data release request’ to Nominet. You will need to explain why you believe you have the right to access the data and Nominet will provide registration details to those with a legitimate reason.
Stage 2: mediation
Nominet offer a free mediation service – if a response is submitted by the Respondent, both parties are automatically opted in to the mediation process, though it is up to the individual party if they choose to engage. Mediators will support the settlement negotiation process – they do not decide the outcome of the case themselves. Mediation is confidential and ‘without prejudice’, meaning that an offer to settle can be made that a Judge (or other decision maker) is not permitted to see until the case has been heard and the judgment has been made and so there is no risk in discussing the case with a mediator. The mediation process typically lasts around 10 days.
Stage 3: expert decision
If the respondent does not submit a response, or if a settlement could not be agreed in mediation, the complainant may pay a fee to appoint an independent adjudicator (known as the ‘expert’) to make a binding decision on the matter.
If no response is submitted by the respondent before the 15 working day deadline, the complainant may opt for a ‘summary’ decision, which costs £200 plus VAT.
Where the parties failed to reach an agreement during mediation, the fee is £750 plus VAT. The expert will review and summarise each party’s position and will choose to either award the remedy requested by the complainant or to simply dismiss the complaint.
The expert will make their decision within 15 working days of their appointment.
Stage 4: appeal
The losing party may appeal the decision and request that the case be re-examined by a panel of three experts. However, appeals are costly, with a fee of £3,000 plus VAT for the expert panel’s services. An appeal request must be made within 10 workings days of the original expert’s decision.
Stage 5: closure
If no appeal is made, where the expert awarded a transfer, cancellation or suspension of the domain name, Nominet will make the necessary administrative changes to the domain name registration records to reflect the expert’s decision.
If an agreement was reached through mediation, the mediator will support the parties in complying with the terms of their agreement.
If the complaint failed, or if neither party takes further action, Nominet will close the DRS case file.
If you would like any advice or support in respect of the DRS process in respect of any administrator, our team of expert IP lawyers can support you throughout the entire process.