30 April 2019

20th anniversary of the procedure for objecting to domain names

It is a common misconception that registering a domain name creates a trade mark right. While it is advisable to register the obvious corresponding domain names before launching a brand, registration of a domain name does not, in itself, confer any trade mark rights, no more than the registration of a company name does in the UK

While a domain name registration confers no trade mark rights on the party who registers it, a third party domain name incorporating a brand name can, on a practical level, be a real thorn in the side of the brand owner. Clearly it blocks the brand owner from ever operating a website from that particular domain name. Worse still, the website operating from the third party’s domain name can confuse existing and potential consumers of the brand owner, leading to custom being diverted. Perhaps worst of all, when inferior or unsafe goods are sold from the website or when no goods or services at all are ever delivered after payment is made via the website, the third party’s domain name can damage the reputation of the brand. All of this causes great headaches for brand owners.

Where the material on the website attached to the domain name infringes trade mark or copyright, brand owners can sometimes have success with getting the website pages taken down by the web hosting provider. However the owner of the domain name often then simply moves to a different web host and starts afresh so this is only a very short-term solution.

Happily for brand owners, the Uniform Dispute Resolution Policy (“UDRP”) launched in 1999 offers an alternative remedy to court proceedings. The UDRP applies to all domain names ending with generic top level domains (e.g. .com, .org, .net). Many jurisdictions (but not Russia) operate a UDRP procedure in relation to domain names ending with their country code (e.g. .uk, .ie).

The party filing the UDRP complaint can request that the domain name registration be either transferred to it or (far less frequently requested) cancelled. While reimbursement of costs and official fees is not ordered in UDRP decisions, the procedure is nonetheless far less costly, and far speedier, than court proceedings. It also circumvents the need to get to grips with the legal systems of foreign jurisdictions involved.

To succeed with a UDRP complaint, the complainant needs to show that the domain name is identical or confusingly similar to a mark in which it has rights, demonstrate that the domain name was registered, and is being used, in bad faith and show that the domain name owner has no legitimate interest in it.

The top level domain (TLD) element of the domain name (e.g. .com) is disregarded when assessing similarity between the domain name and the complainant’s trade mark. However the TLD can be taken into account when considering whether the domain name was registered in bad faith. The top level domain .tv (the country code for the Polynesian island, Tuvalu) was considered relevant in the successful complaint brought by the French TV company Canal + France about the domain name

UDRP decisions have consistently held that obvious or intentional misspelling of a trade mark within a domain name does not affect similarity. The presence or omission of e.g. & and + signs is generally considered to be neutral when considering whether a domain name is identical or confusingly similar to a trade mark; thus was considered identical to VAN CLEEF & ARPELS. Domain names comprising translations of trade marks are usually found to be identical or confusingly similar to the trade mark and, so, the owners of the rights to Saint-Exupery’s novella, Le Petit Prince, succeeded with their UDRP complaints about and

The fact that the domain name may contain additional words is generally ignored when assessing similarity, provided that the trade mark is recognizable within it. Thus, the Danish company behind LEGO building bricks succeeded with its 2019 complaint about

The success rate of UDRP complaints is high. According to estimated figures released in 2018 by the World Intellectual Property Organisation (WIPO) (which handles an estimated 55% of all UDRP complaints), WIPO ordered the transfer of the domain name to the complainant in 86% of UDRP complaints.

To ensure the speediness of the UDRP procedure (a decision is usually issued by WIPO within 75 days), there are no “evidence rounds” as in court litigation. Since there is no opportunity to submit omitted evidence at a later stage in the UDRP process, all relevant evidence needs to be included succinctly in the initial complaint.

While the ideal is to register all obvious domain names before launching a brand, the UDRP procedure is a valuable tool for the brand owner encountering troublesome domain names later on. However, while designed to be a simpler procedure than fully blown litigation, it is nonetheless essential that the UDRP complaint is prepared properly. In certain limited scenarios the UDRP procedure is not the most appropriate solution for the trade mark owner and it is essential to consider its suitability before filing.