Having written the only UK book of which we know focused solely on domain name law we have enormous experience of this area. For free opinion click here.
We have been involved in a wide range of domain name cases. Some examples are set out below.
1. Complaints by a party which feels that a third party has registered a name which should rightfully belong to it not the third party:
www.bernardmatthews.co.uk – we managed to secure the domain name for the well known turkey producer which had been registered by someone who had the same name but whose claim to be using the name legitimately we proved to be tenuous
www.hollyvalance.com – we managed to secure the name for the well-known actress and recording artiste. It had been registered by an unconnected party and then diverted to an adult site. Again, we proved bad faith
www.post-office.co.uk – we managed to secure a settlement for our client who had registered the name and was challenged by the Post Office who claimed that it infringed their trade mark.
2. Where a competitor has used a trade mark of one of our clients for paid ad searches like google adwords.
3. Where a competitor has embedded our client’s trademark into its website meta data.
Whatever your issue, we will provide a free outline review and opinion on your domain name issue if you can provide us with a summary of the facts.
Famous Cybersquatting Cases
The first key battle between cybersquatters and brand owners took place in 1997 and went to the Court of Appeal. It is still, arguably, the key case in this field. There were actually five joined cases and all of the Plaintiffs were extremely famous: (1) British Telecommunications (2) Ladrokes Group (3) J Sainsbury Plc (4) Marks and Spencer and (5) Virgin Enterprises. There were several defendants, most notably One In A Million Ltd.
The judgment seemed to sound the death knell for cybersquatters but battle has raged ever since. The multiplicity of TLDs (top level domain suffixes) e.g .com, .biz, .info, .me, .tv, .co has been grist to the mill for cybersquatters. Despite the introduction of “sunrise periods” to protect brand owners, the proliferation of variants and privacy shields has enabled hard-core, recidivist and fleet-footed cybersquatters to ply their trade in ever-increasing circles.
Various laws, dispute resolution mechanisms and channels exist, notably the courts, the Anticybersquatting Consumer Protection Act (ACPA), UDRP and national registrar procedures such as those provided by Nominet. However, unscrupulous operators are still able to turn a profit knowing that brand-owners will often eat their principles and pay a ransom rather than suffer the expense, uncertainty and time involved when opting for official channels.
Some of the more notable cases involved financial institutions, sports clubs and celebrities. These include:-
bankofamericamerrilllynch.com, bofaml.com, dellfinacncialservices.com, juliaroberts.com, kodak.ru, myverizonwireless.com, iphoneverizonplans.com and verizon-cellular.com, sting.com, leonalewis.net, manchesterunitedfc.com, scarlettjohansson.com, bbcnews.com, michaelcrichton.com, Eminemmobile.com, Jethro Tull v. Denny Hammerton, Madonna v. Parisi, Primedia Magazine Finance Inc. (Tiger Beat) v Next Level Productions (Benny Doro).
We have no doubt that this will continue to be a minefield for brand owners who decide not to cover all the domain registration bases and, to a lesser extent, even for those who do.
For a free outline opinion on your situation, please call Simon Halberstam on 020 3206 2781 or via email to [email protected].