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The surge in global internet usage in recent years has resulted in domain names becoming precious and sought after commodities. “Cybersquatters” have inevitably sought to take advantage of this. In order to ensure the success, protection and promotion of your brand, it is paramount to take steps to prevent cybersquatting activities. If the opportunity for prevention has been lost, and a domain name dispute does arise, it is important to resolve any potential disputes effectively and efficiently.

Cybersquatting is the registering, selling or using of a domain name in bad faith with the intent of profiting from the goodwill of someone else’s trade mark. It generally refers to the practice of buying up domain names that use the names of existing businesses and trying to sell them back to a party for an inflated price. It is also commonly used to direct traffic to the cybersquatter’s website or the website of a competitor of the trade mark holder in return for payment of a commission.

Prevention is always better than cure. There are a number of steps that can be taken to protect domain names and reduce the risk of disputes arising:

1. Search prior to registration – A search of unregistered and registered trade marks in territories of interest will assist you in identify whether there are likely to be issues in using and/or registering a domain name.

2. Strategy - Registering every available domain name extension is not always possible or necessary. Registrations of Country Code Top Level Domains (“ccTLDs”) and Generic Top Level Domains (“gTLDs”) should be targeted according to your business interests and the territory you operate in.

3. Register the domain name as a trade mark – If it is worthwhile considering registering your domain name as a trade mark. Having a registered trade mark could assist in the event of a dispute over rights in a domain name.

4. Register common misspellings - If a name is commonly spelt incorrectly it may be advisable to register misspellings in order to prevent “typosquatters”.

5. Identify new ccTLDs and gTLDs – New extensions are continually being introduced.  Make sure you are up to date and consider including them in your domain name portfolio. 

6. Monitor – Regularly check and actively monitor if any similar domain names have been registered.  There are services available which will actively monitor all new registrations and services which purchase domain names as soon as they become available for registration.

7. Manage - Be aware that your domain name requires renewal and may be registered by a third party if you forget. Work with a registrar, and ensure that contact details are kept up to date.

If a dispute cannot be avoided, there are various ways for resolution:

As an initial step, a Cease and Desist letter (asking the other party to stop using and to transfer the domain name) may be enough to prompt them to transfer it avoid further legal action. Negotiating a price for the acquisition of the domain name may be the commercially prudent solution.

There are Domain Name Dispute Resolution Services directly applicable to domain names, which are incorporated in the terms of registration. The most widely used is Uniform Dispute for Domain Names Resolution Policy (“UDRP”) which allows complaints to be filed with the World Intellectual Property Organisation (“WIPO”) and other national bodies.  These services have been developed to allow for a timelier and cost effective resolution of disputes without the need to resort to court proceedings.

Domain name recovery can also be dealt with via traditional Dispute Resolution techniques and options, including mediation, can be explored. 

To be successful in a UDRP complaint, a complainant must establish that:

i. The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
ii. The respondent has no rights or legitimate interests in respect of the domain name; and
iii. The domain name has been registered and is being used in bad faith. 

To avoid failures, here are some UDRP filing tips to ensure a cost effective success:

1. Research, research, research – The importance of research cannot be underestimated. Research case law, research the registrant, research the provider you want to use, research your panellist.

2. Include similar domain names under the same defendant -  It is always recommended to include other domain names with your marks to a complaint. Use a service that will allow you to search a registrant name and identify their domain portfolio. If there are similar domains (typos or phonetically similar) owned by the same registrant, it would be worth adding these domains to the complaint so you can maximise your return.

3. Check the panellist appointed to your case – You have the right to object to any appointed panellist. Once named, it is advisable to review the biography of your panellist to ensure that there is no potential conflict of interest which could arise and provide you with the best chances of a favourable decision.

4. Use three-person panels only for complex cases -  If your case is clear, supported with ample evidence and fulfils all three requirements outlined above, a one-person panel is likely to be sufficient

5. Shorter is sweeter – A limit of 5000 words is placed on the UDRP assertions and arguments, but in all likelihood you should never need to use the maximum word length in your filing. You will find more success if your arguments are succinct and supported by relevant case law.

10. Don’t just settle – It may be worth proceeding with the case establish a record of documented evidence that may be used by yourself and others filing against them. Additionally, your company will be on record as an organisation that takes a proactive stance against cybersquatters.

For further information on domain name filing, domain name protection strategies and Domain Name Dispute Resolution, please do not hesitate to contact Pitmans’ Intellectual Property team.

Stacey Jones
Solicitor
T: +44 (0)118 957 0235
E: staceyjones@pitmans.com

Sally Britton
Partner
T: +44 (0)20 7634 4623
E: sbritton@pitmans.com