Twice in the past year, this writer has dealt with queries from clients who, in the course of rebranding, have found that the .com/co.uk domain name they would like to use, has been registered to someone else. In both instances, their IT specialists advised them to get in touch with their trade mark attorney to ‘reclaim’ the domain name through the ‘legal’ route. Unfortunately, in both cases, there was absolutely no basis for making any application to ‘reclaim’ the domain name, which was a severe disappointment to the clients concerned. It would appear that a lot of IT professionals do not have a great deal of experience of the way the ‘legal’ route works, so we would strongly recommend clients don’t expect too much, should this avenue be suggested to them.
While use/registration of domain names can constitute trade mark infringement, and be dealt with via an application to the Courts, most domain name disputes are sorted out at a more administrative level, using the dispute resolution service provided by the registration authority concerned. In the UK, with respect to .uk domains, the internationally respected Nominet dispute resolution system applies. In other jurisdictions, slightly different systems will be in place, but the underlying principles are often very similar to those applying in the UK.
Looking at recent Nominet data reveals that Nominet experts issued decisions on 24 domain name disputes in October 2017. In most of these cases, transfer of the domain name was ordered, but no action was taken in 4 of the cases looked at by the experts. In order to convince the Nominet authorities to make a transfer of a domain name, rights in the name need to be shown, but it also has to be demonstrated that the domain name, in the hands of the registrant, is in some way abusive. This is the hurdle where most complainants fall; owning a trade mark registration does not automatically mean that your case succeeds.
The decisions which issue in domain name disputes are often very lengthy, reflecting the complex factual matrix the experts have to sift through, but we can highly recommend, in terms of readability, the decision in the glasgowgin.co.uk case. This decision was issued on 12 October 2017 and relates to Case No. D0019268. In this case, although the complainant had acquired a trade mark registration for a mark incorporating the words Glasgow Gin, and was a Scottish company incorporated under the name Glasgow Gin Company Ltd, they couldn’t show that the complained-of domain name was abusive in any way. This was unsurprising, given that the registrant of the domain name had registered the domain name four and a half years before the complainant acquired any potentially relevant rights.
We can appreciate that it is frustrating to pour energy into a rebranding project, only to find that the desired domain name is unobtainable. However, the new gTLDs offer many more options in terms of domain name registration than previously and the selection of one of these options could well work even better for your business than the .co.uk or .com address.
For more information on domain name dispute issues, please do not hesitate to get in touch with your usual trade mark attorney contact.
Authored by Cathy Ayers