Protecting Your Domain – What’s In a Name Anyway?
The start of 2015 has seen a large number of new generic top level domain names (gTLDs) created, in numbers previously unprecedented in the history of the internet. A gTLD is the suffix used in web addresses (for example .com or .co.uk). These had previously been restricted to 22 versions and the number of gTLDs is set to rise from 22 to 617 by the end of 2015.
Shortly after the meteoric rise of the internet in the early nineties, domain name squatting became a serious issue. Opportunistic individuals would buy domain names of major household brands in the belief that they would then be able to ‘sell’ the domain name to the business in question.
Whilst case law has developed to offer the major brands more protection from ‘domain name squatting’, it is far from watertight and the introduction of a significant number of new gTLDs may lead to a fresh round of disputes over domain names.
Given the potential this might create for domain name disputes, it is important to remember that further to your usual legal remedies available through the Court process in England and Wales, there are a number of other bodies that provide domain name dispute resolution. The most notable of these services is run by the Internet Corporation for Assigned Names and Numbers (ICANN), which is a not for profit international organisation that (as part of its service) offers dispute resolution in relation to domain names. ICANN administrates the registration and process for registering gTLDs and is consequently well placed to assist in resolving disputes of this nature.
The ICANN dispute resolution procedure will consider various aspects when determining a dispute. It will look at whether the domain name is identical or similar to intellectual property or a brand used by a party, which will often follow relevant legal principles from the jurisdiction in which the resolution procedure is taking place. The procedure will also look at whether the challenged party has a legitimate interest in using the domain name, for example whether there are allegations of ‘domain name squatting’ and whether the domain name was acquired in ‘bad faith’.
This dispute resolution procedure roughly follows the intellectual property principles commonly determined by the Courts in England and Wales and can often be less formal than issuing a claim in the High Court or County Court. ICANN also often uses the World Intellectual Property Office (WIPO) Arbitration and Mediation Centre, which provides the same service as current arbitration and mediation centres do during the Court process of England and Wales.
Nominet is a company based in the UK that offers a similar service for disputes for domain names currently ending in .co.uk or a .com ending that refers to a UK company. The Nominet procedure is similar to that of ICANN and can be utilised if the dispute refers to a domain name within this remit.
For help with the ICANN or Nominet dispute resolution procedure or any other intellectual property dispute regarding domain names or websites generally, please do not hesitate to contact the Trethowans Commercial Litigation team