Domain Name Disputes (for .com, .net and other gTLDs websites)

If someone registers a website domain name which is similar to a name you have an interest in then you might be able to have the domain forcibly transferred to yourself. The approach you take to achieve this depends on type of domain (.com, .uk etc), whether you wish to seek damages (e.g. for defamation, lost profits or infringement of a trade mark), the reason why the third party registered the domain name and the amount of time and money you wish to spend.

To consider what might be the best approach, some commonly used internet terms are useful

• Domain name - The name of the website without the "www" e.g. processknowhow.com
• Top Level Domain - The suffix at the end of the domain name e.g. ‘.com’, ‘.uk’. TLDs are categorised as generic TLDs (gTLD) such as ‘.com’, ‘.net’ etc or as country code (ccTLD) such as ‘.uk’, ‘.fr’ etc
• Registry - the centralised database where ownership records for domain names are kept. Each Top Level Domain has its own centralised registry e.g. for ‘.uk’ domains the registry is NOMINET and for ‘.com’ the registry is Network Systems.
• Domain registrar - The Internet Service Provider who administers the records of who owns a domain name on behalf of the owner. The Domain Registrar will keep password security codes needed to update the ownership records of a domain held by a registry.
• Domain registrant - The party to whom ownership of a domain name is registered.
• Web-space - the hard drive of a server computer that is connected to the internet. The pages of a website are stored on the web-space.
• Web-host - The Internet Service Provider that rents web-space to a customer.
• IP address (Internet Protocol Address) - a unique 12 digit number of the format xxx.xxx.xxx.xxx that is assigned to a server where web-space is stored. The IP Address specifies exactly where in the World the server is physically connected to the internet.
• Domain Name System (DNS) - A global internet system which converts domain names to IP addresses. This allows a domain name to be entered into a browser and for this to be translated to an IP address so that the browser can be connected to the right web-space. DNS is made out of many Name Servers connected together which share domain name and IP data.

To set up a website, you use a domain registrar to register your domain name with the applicable registry and you will also rent web-space from a web host to store your web pages. You provide the registrar with the IP address of where the web space is located. You might choose different internet service providers to register the domain name and to host the web pages but for convenience the same ISP is usually used for both.

Disputing a domain name

Internet Corporation for Assigned Names and Numbers (ICANN) has responsibility for the registration of domain names and delegates this responsibility to the registry for each TLD. Each registry maintains its own policies and procedures on how the ownership of domain names can be disputed. ICANN has produced the Uniform Domain Name Dispute Resolution Policy (UDRP) which is adopted by the main gTLD registries such as .com, .biz, .com, .info, .name, .net, and .org. Registries for ccTLDs adopt the UDRP or apply their own policies. The website for a the TLD registry needs to be checked to find their dispute policies and procedures.

Possible option for getting domain names re-registered to yourself might include

• Contact the registrant and seek to purchase the domain name from them
• If you meet the criteria set by the dispute resolution policy of the TLD with whom the domain is registered then submit a claim by following the registry’s procedures.
• Sue the registrant to seek a court to order to have the domain name re-registered or seek agreement with the registrant to submit to arbitration over ownership of the domain name.
• If the registrant does not renew a the registration of the domain name with a registry (which involves the domain registrar of the registrant paying a renewal fee to the registry) when the registration is due to expire then use a ‘drop-catcher’ service provider to register the name when it becomes available (which is termed being 'dropped').

The option to take legal action can prove expensive and time consuming. It might involve cross-boarder legal action against third parties in other jurisdictions which can be complex. The registrant might also conceal their true identity and they might prove difficult to contact. Dispute resolution procedures can be much less expensive and do not require the identity of the registrant to be know but have the drawback that they can require ‘bad faith’ to be shown (see below) and they can not be used to seek compensation from a third party e.g. for trade mark infringement, passing off and defamation.

Where obtaining the re-registration of a domain is not feasible then alternative approaches could be considered. These might include

• ignore the third party site if it is of no real consequence
• ask the third party to include a link to your own site for anyone who might accidentally stray onto the third party site
• if the third party’s website breaches the terms and conditions of their web host or domain registrar (e.g. by publishing illegal material) then bring this to the attention of their ISP who might shut down the website.

If re-registration would be sought for a number of websites then the costs to accomplish this might prove excessive. Hence, a plan from the outset should be developed to prioritise the key sites to be targeted for re-registration.

Bringing an action under the UDRP

A dispute claim form needs to be filed with an approved Dispute Resolution Service Provider together with the applicable fee. The main provider is the World Intellectual Property Organisation (WIPO) where the claim can be submitted online. For a claim to be successful, certain criteria need to be met which include

• Identical to or confusingly similar The disputed domain must be identical to or confusingly similar with a name, trade mark or service mark in which the claimant has rights. Unregistered trade marks are permitted providing they have acquired distinctiveness through use
• No legitimate rights or interests The registrant must have no legitimate rights or interests of its own in the disputed domain name e.g. the registrant might have a legitimate business for which they have registered a domain name.
• Bad faith The disputed domain must have been both registered and used in bad faith e.g. a domain which is registered to divert users to other sites by creating a likelihood of confusion where the intention is to sell the domain.

The link is directly to the WIPO guidance on submitting a UDRP claim for a domain name.