As many businesses increase their online exposure with Facebook pages and LinkedIn profiles, a new company’s starting point will generally be a website to market its offering and attract customers. A domain name is a form of electronic address for that website. The majority of you will own one and it will be a valuable asset of your business.

All domains fall under the administrative umbrella of the Internet Corporation for Assigned Names and Numbers (ICANN) which manages the domain name system, and contracts with the different registries around the world. Nominet is the registry to which ICANN has delegated responsibility for the .uk domain, including the task of handling .uk disputes.

So if you operate a software company under a brand, say, “Tech Wizard” and discover a website techwizard.co.uk, what can you do about it?

Nominet Dispute Resolution Service

The service is a cost-effective and simple method of resolving .uk disputes (as compared to the court system) based on the DRS Policy and Procedure, part of the Nominet Terms and Conditions which contractually bind all .uk registrants.

Issuing a complaint

You may initiate a complaint if you discover a domain name which either is:

    • Similar or identical to a domain name in which you have enforceable rights (under English law or otherwise) such as a registered trade mark or the right to pursue a passing off action, i.e. you have a trade mark for “Tech Wizard”; or
  • An “abusive registration”. An abusive registration is where the domain name in question was registered, acquired or has been used in a manner which takes or has taken unfair advantage of or has been unfairly detrimental to your rights. Proof of this must be given, for example, evidence that the respondent:
  1. Has registered or acquired the domain name to sell or rent it to you or a competitor for profit; to use it as a blocking registration; or for the purpose of unfairly disrupting your business;
  2. Has used (or threatened to use) the domain name to pass it off as being yours, i.e. by selling its service under the “Tech Wizard” brand; or
  3. Has registered multiple domain names which correspond to well known names or trade marks in which it has no rights, and the domain name is part of that pattern.

What can the respondent do?

Once your complaint has been forwarded to the respondent, it will have a chance to defend itself, for example, with evidence that it has used the domain name in connection with a genuine offering of goods or services; that it has been commonly known by that name or legitimately connected with a mark which is identical or similar to the domain name; that it has made legitimate non-commercial or fair use of the domain name (including tribute or criticism sites); or that the domain name is generic or descriptive and that is making fair use of it.

Resolution of the complaint

You may then submit a reply after which Nominet will conduct an informal mediation to try to settle the dispute. Failing that, an independent expert will be appointed to review the submissions and make a decision.

The expert may order a transfer of the domain name to you, that it be suspended or cancelled, or that no action be taken. Alternatively, if the expert believes you are acting in bad faith to obtain the domain name, it may declare that you are “reverse domain name hijacking”. There is the right of appeal if necessary and any decision will be published.

Costs

Nominet’s costs are £200 plus VAT for a summary decision or £750 plus VAT for a fully reasoned decision. An appeal will cost £3,000 plus VAT.

Although the Nominet Dispute Resolution Service is designed to avoid legal costs and the Service, Policy and Procedure are all accessible and clear ( http://www.nic.uk/disputes ), if you do require advice or assistance in respect of a domain name which poses a risk to your business, please don’t hesitate to contact us by telephone on 020 7440 2540 or by e-mail at enquiries@fortunelaw.com.