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.
Several avenues are available for resolving alleged abusive registrations of domain names:
- Domain Name Dispute Resolution Policies: Many top-level domain registries, such as .com, .org, and country-specific domains, operate dispute resolution policies for complaints filed about registered domain names. The most widely known policy is the Uniform Domain-Name Dispute-Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN). These policies provide a streamlined process for resolving domain name disputes to avoid the expense of court action.
- Mediation and Arbitration: Parties can engage in mediation or arbitration outside of the established domain name dispute policies. This involves the appointment of a neutral third party who facilitates negotiations or renders a binding decision. Organisations like the World Intellectual Property Organisation (WIPO) provide specialised services for resolving domain name disputes.
- Legal Action: If the dispute cannot be resolved through dispute resolution policies, mediation or arbitration, parties may use litigation in court. Legal action may be necessary if the dispute involves complex legal issues, substantial damages, or if the dispute extends beyond domain name rights into broader intellectual property or contractual matters.
Our team of trade mark attorneys, solicitors and barristers work closely together in domain name disputes to assess the specific circumstances and determine the best course of action for resolving the dispute.