Domain Name Recovery

Jane Lambert

When you key in the name of a business or one of its products or services into the address of a modern browser like Chrome the chances are that it will take you to where you want to go. Increasingly frequently, however. such an exercise will lead you to a landing page with sponsored links and searches including links to products or services of the business you are trying to reach. Occasionally, it will even lead to a spoof site that looks and feels like a genuine site but if a user tries to order goods or services through it or simply leaves an email address all sorts of annoying things can happen of which serial spamming is probably the least to worry about.

The reason why internet users are waylaid in this way is that it is very cheap and easy to register a domain name that is the same or similar to a business name or trade mark. Now registering a domain name that is the same as, or similar to, someone else's trade mark or business name without justification has been illegal for years. Mr Jonathan Sumption QC, who now sits in the Supreme Court, called it "going equipped for passing off." But although it is illegal there is not much that courts or governments can do about it, especially when the owner of the business or trade mark and the person who registers a similar domain name are in different countries

However, ICANN (the Internet Corporation for Assigned Names and Numbers), the body that runs the worldwide domain name system, and national or regional domain name authorities such as Nominet, can compel registrars to transfer domain names that have been registered unlawfully to the trade mark or business owner. The reason those authorities can do that is that they allow registrars to register domain names on condition that they register domain names on the following terms.

Everybody who applies to register a domain name or asks a registrar to renew or maintain a domain name represents and warrants to the registrar that:
(a) the statements that he or she makes in his registration agreement is complete and accurate;
(b) to his or her knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
(c) the applicant is not registering the domain name for any unlawful purpose; and
(d) he or she will not knowingly use the domain name in violation of any applicable laws or regulations.
It is the applicant's responsibility to determine whether the domain name registration infringes or violates someone else's rights.

If a third party complains that:

• the domain name is the same as, or confusingly similar to, a trade mark in which the complainant has rights (which may include a right to bring an action for passing off, unfair competition or some similar action); 
• the person who has registered the domain name has no rights or legitimate interests in the domain name; and 
• that person has registered and is using the domain name in bad faith;

the person who registered the domain name has to submit to expert determination by a panellist appointed by an authorized dispute resolution provider or by panellists appointed by each of the parties and chaired by a chairman appointed by the dispute resolution provider.  If the panel orders the transfer or cancellation of the domain name, the registrar reserves the right in the registration agreement to carry out the order.

The World Intellectual Property Organization ("WIPO") is one of those authorized domain name dispute resolution providers and I have been one of its panellists since 2003 and have decided many domain name disputes. I was one of the first (if not the first) counsel to settle proceedings before the WIPO from the UK. I have written a number of articles about domain name dispute resolution and have represented parties to domain name disputes before the English courts.

Now you might think that drafting a complaint to the WIPO, Nominet or some other domain name authority dispute resolution would be straightforward but you would be surprised how many people complicate it unnecessarily and sometimes even get it wrong. For instance, the registration agreement requires a complainant simply to show that the disputed domain name is the same as or confusingly similar to a trade mark in which he or she has rights. In other words, he or she has only to show a single identical or similar registration in any country if the mark is registered or if, it is not, the basic facts that would give rise to an action for passing off. 

More often than not, the poor old panellist receives a lengthy panegyric in praise of the complainant that looks as though it has been written by a public relations consultant rather than a lawyer plus pages of records or even exhibits of trade mark registrations in almost every country in the world whether relevant or not. The panellist has to read through all that bumf and as he or she is paid only US$1,000 for every domain name dispute he or she does not take kindly to such profligate waste or his or her time and energy. But, worse, the lawyers who compile such magna opera are no doubt time charging for their time at a generous hourly rate. The submissions on the other two elements, namely the absence of a right or legitimate interest in the domain name and registration and use in bad faith prompt even greater volumes of unnecessary and uncalled for verbiage.

There is a way to avoid antagonizing the panellist and wasting money and that is to consult a lawyer who has done this kind of work before and understands exactly what is required to achieve a domain name transfer or cancellation. A complaint in a domain name dispute is not too different from particulars of claim in civil litigatio which has traditionally been left to counsel or solicitor or patent or trade mark attorney advocates. 

If you want to know whether you have a case before the WIPO, Nominet, the Czech Court of Arbitration or any other domain name dispute resolution panel I shall be very happy to advise you in writing for US$1,000 or the equivalent in sterling plus VAT should you be a UK business or resident. My advice will tell you how to complete the complaint. If you want me to do that for you, I will charge you US$1,000 for drafting the complaint unless you have already asked me to advise you in which case I will do it for US$500 or the equivalent in sterling. I will allow you a US$500 credit off my next piece of work related to the matter if I advise you to take some other step such as drafting a letter before claim or advice or representation before a mediator.

If you want to discuss any of those steps, call me on +44 (0)202 7404 5252 or send me a message through my contact form. You can also reach me through twitter, Facebook or Linkedin.