Internet domain names are seen as an extension of an organisation’s brand that is open for business 24 hours a day, seven days a week. They are generally registered on a first come, first served basis and it is entirely possible for someone to register a domain name that is similar to yours which can lead to customer confusion or, worst case scenario, reputational damage.
Buying and Selling Domain Names
The process of buying or selling a domain name can be fraught with difficulty – usually related to a lack of trust between the parties involved. We provide clients with security during domain name transactions by advising them on the transfer agreement and providing them with escrow services. A transfer may also be necessary when your organisation’s status changes in some way and we advise clients on this situation as well as when the transfer of a domain name is part of a larger disposal of assets.
Domain Name Disputes
If your business is being damaged by the lack of an appropriate domain name or by the operation of domain name that is very similar to yours then you need to resolve it, fast! Whether your domain name has been stolen, another company has overstepped the mark and is utilising your domain name (or one very similar to it) inappropriately, or if you are the subject of cybersquatting, our team of commercial solicitors will advise you on the best course of action to resolve the dispute as quickly and cost effectively as possible.
Domain Name Law
It seemed that the scope for cybersquatting speculators had been severely curtailed by the famous British Telecommunications Plc & Ors v One In A Million case  EWCA Civ 1272 (23 July 1998). However, various factors have contributed to a massive upsurge in litigation in this area fuelled by myriad speculative, exploitative and malevolent domain name registrations.
More and more companies are focussing their energies on developing their online presence. In fact, many businesses now derive the majority of their income from their web presence. As a result, the value of the domain names most readily associated with their brand name increases to reflect this. This in turn has encouraged speculators and charlatans to register domain names that these companies have either omitted to register or allowed to lapse. As proceedings to procure transfer of a domain name are likely to cost several thousand pounds, there is ample opportunity for cybersquatters to hold brand owners to ransom.
Multiplicity of Top Level Domains (TLD)
Whereas initially a UK company would only generally have been interested in relevant .com and .co.uk domain names, it would now also have to consider, amongst others .co, .mobi. biz and .eu. Whilst the brand owner may not actually be very interested in registering these variants, the potential damage to its brand that can arise from competitors or any third party registering them is substantial. The greater the number of important domain names, the greater the scope for unprincipled operators in this field hence the escalation in the number of domain name disputes.
Different Dispute Resolution Systems
Different TLDs are covered by different dispute resolution procedures. For example, disputes over .coms are usually resolved through the UDRP administered by WIPO whereas .co.uk disputes are typically prosecuted through Nominet's dispute resolution procedure. All domain name disputes may also be determined by the courts. In some cases one route may be far more likely to enable the desired outcome than another. In each case, the costs, advantages and disadvantages of each potential channel must be carefully weighed up before determining which track to follow.
Proprietary and Generic Names
Whilst it is valid to view domain names as a form of intellectual property right, one must distinguish between those which are proprietary e.g. johnlewis.com or gucci.com and those which are generic e.g. sex.com and football.com. The former may legitimately be protected using the various mechanisms referred to above whereas the latter are, in principle, "fair game" for speculators.
However, the legal issues arise where the line of demarcation becomes blurred. For example, would a florist who started trading in 1966 - well before the advent of the internet - under the name "The flower store" have a legitimate proprietary interest in "theflowerstore.com" and be able to procure transfer of that name from a third party registrant?
All of these and many other issues make domain name law both fascinating and complex. Having advised on and acted in many domain name disputes, we are able to provide succinct and precise advice on all such situations.
For more information or to speak to our team of commercial solicitors, please contact Simon Halberstam at email@example.com.