Domain Name Law | Domain Rights
This is a complex area of the law. In this section of the weblaw.co.uk website, we will try to help you to understand these matters so that you can apply the information on this site to your own situation.
Domain Disputes
In a typical domain dispute, there will be two entities involved both of which think that they should be entitled to a particular domain name. Often there is a conflict between Domain Rights and Trademark Rights. If one party has a particular domain name but another party owns trademark rights in that name, there is likely to be a problem. Such Domain Disputes can be resolved through the courts or the appropriate Domain Name Dispute procedure. Domain Name Law does not provide a simple answer for all such disputes such that the Domain Rights holder always defeats the trademark owner or vice versa. However, there are certain key factors in domain law that typically point towards the solution. We will consider these below.
Key Factors
1.Stolen Domain Names
From a legal perspective, this is one of the simplest scenarios in domain name law. If a third party has without any right whatsoever managed to transfer a domain name from your account to its own, then it has infringed your domain rights and you should be able to recover it by contacting the ISP and proving your case. In a world menaced by terrorism and global warming, stolen domain names might not sound like a serious issue but the entities behind such foul play are often serious criminals. Where fraud or other forms of criminal behaviour are involved, you should notify the police. Whilst that may not provide a fast method of recovering the stolen domain name, it may help to capture the perpetrator and avoid recurrence.
2.Cybersquatting
This is one of the most common scenarios in domain disputes. Domain law is now well established in this area. In the leading cybersquatting case of BT v One in a Million [1999] FSR 1 the court decided that it was not legally acceptable for a cybersquatter i.e. an entity without relevant domain rights to register a domain name which the public would naturally expect to be associated with a third party. This can overlap with passing off domain name activity. In that scenario, the domain name is usually diverted to the website of a third party competitor who seeks to trade off the goodwill of the legitimate brand owner. However, typically cybersquatting and passing off domain name machinations are quite distinct. The former involves someone who simply buys domain names with a view to holding the proper rights owner to ransom whereas in cases of passing off domain name activity, it is almost always a competitor trying to benefit from the goodwill established by the legitimate company but usually without seeking to sell the domain name to that company.
3. Passing Off Domain Name
This is probably the busiest area of activity for the typical domain name lawyer. Domain name disputes often pivot around the issue as to whether a company has overstepped the mark by registering a domain name which reflects the trading name or product name of one of its competitors. Another similar form of dispute may arise where a company uses metatags or pays for sponsored ads which incorporate the competitor’s branding. Each case is assessed on its facts but if the bottom line is that a trading entity is taking unfair advantage of a competitor’s branding and/or marketing efforts, the courts will usually find in favour of the competitor and award damages or order an account for profits.
For further information, see our domain name services or call Simon Halberstam on 020 3206 2781 or via email to simon.halberstam@smab.co.uk at weblaw.
© 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 and should not be construed as legal advice or opinion in any specific facts or circumstances. You are urged to contact a suitably qualified lawyer for specific advice.