Domain name disputes – 7 key issues

We deal with loads of domain name disputes. Very often the fundamental issue is what to do if you find that someone has registered a domain name which is the same or very similar to your corporate name or another domain name that you use for trading purposes.

Rather than bore you with the legal niceties, I shall examine 7 key factors which will usually determine whether you have a good case to obtain transfer of the domain name.

1. Did the other party register the Domain Name before you registered yours?

If the answer is yes, your position is probably very difficult, especially if the domain name in question is a .com, .net or .org as for such domains, you need to prove not only that the use of the domain is in bad faith but also that it was registered in bad faith. However, with a and certain other domains, this is not so crucial as it is sufficient as bad faith use alone is sufficient.

2. Does either party own a Registered Trade Mark?

Whilst not necessarily decisive, ownership of a registered trade mark which, excluding the suffix e.g. “com” or “”, is identical to the domain name in question is like an ace in a game of cards and vastly improves your chances of success. If on the other hand, it is the alleged “cybersquatter” who owns the registered trade mark, your chances of success will be lower and you might find yourself on the wrong end of a claim for cybersquatting.

3. Is the Domain Name Generic?

If the domain name is generic, for example, you will have far more difficulty establishing your entitlement than if it is of a proprietary nature e.g. “”. This does not mean to say that there is no chance of obtaining transfer of a generic domain name but you will have to convince the adjudicator that the name has become synonymous with you. For example “bodyshop” is a generic name that has become proprietary by association.

4. Does the Domain Name Include a Celebrity’s Name?

If the domain name in question corresponds to a celebrity’s name, the chances of procuring a transfer are greatly enhanced. For example, modesty aside, if someone registered “”, I would have a very good chance of obtaining transfer especially if it were being used to provide legal services. If, however, the domain name were being used for a fan site, chance would be a fine thing, things could become more difficult especially if the owner were not making any commercial profit from the website.

5. Does the Domain Name Include a Well-Known Brand?

Since the case of “One in a Million” in 1998, the position has been very positive for well known brand owners and the courts and dispute resolution bodies give short shrift to speculative, parasitic registrations of this nature. The questions will always be whether your brand is well enough known and whether the registrant was seeking to trade off your goodwill or just happened to register a similar or identical name without knowing of your existence.

6. Can Your Prove Bad Faith?

Whether you go through the dispute resolution procedures provided for domain name disputes or you go through the courts, a key factor will be whether you can prove “bad faith” on the part of the registrant. With certain categories of domain name e.g. “.com, .net and .org” you need to prove bad faith both at the time of registration and in respect of the use being made of the name. However, with others, notably “” it is sufficient to demonstrate bad faith in the way the domain name is being used, irrespective of whether the original registration was made in good faith or bad.

7. How Long Has This Been Going On?

If the domain name which you are concerned about was registered a long time ago, you may face difficulties as the courts or adjudicator may infer that your business can not have been severely affected as otherwise you would have done something about this far earlier. What is a long time ago? Although every case is different, if the registration in question was made more than 2 years ago, your case is beginning to look weaker. However, if the registration was made a long time ago but the site only became active recently, that should help.

© This article is copyright Simon Halberstam 2008 and should not be construed as legal advice or opinion in any specific facts or circumstances. the contents are intended for generic information purposes only. You are urged to contact a suitably qualified lawyer for specific advice.