Here is our list of top tips in domain name disputes.
- Put together a robust domain name registration and defence policy
What this will look like will vary from one company to another, but typically it will mean:
- Linking your trade mark registration and your domain name registration strategy together.
- Conducting trade mark searching before registering domains (and trade marks).
- Making proper use of the Trademark Clearinghouse and the domain name blocking mechanisms available to owners of registered trade marks.
- Not overspending on a defensive portfolio of domain name registrations
- Keeping tight control of your domains, so that they are always owned by the correct entity and the contact details are correct and up to date.
- Setting up watches on domain names, so you are alerted as soon as any conflicting domain name becomes registered.
- Use the services of an experienced professional, or at least seek assistance from a trusted colleague
Professional assistance will obviously maximise your chances of success in any given case, but if it’s not possible to use professional assistance for any reason, do at least ask a trusted colleague to give you honest feedback on whether your written statements are as convincing as they could be, and are clear and unambiguous.
- Always use every opportunity available to file a response to anything the other party submits
This means always filing a response to any complaint submitted against you, and in Nominet DRS proceedings always filing a reply to any response filed by a respondent.
In legal matters, it is always risky to leave any point unanswered, and if you read through previous decisions, you will often see negative comments from the adjudicators made in relation to people who don’t reply to points raised against them.
Bear in mind, though, that neither the Uniform Dispute Resolution Procedure (UDRP), the EURid ADR, nor the Uniform Rapid Suspension System (URS) makes provision for a Complainant to respond to a Respondent’s response – so the Respondent’s likely arguments need to be anticipated and addressed in the initial complaint. UDRP and ADR panellists take a dim view of unsolicited additional arguments and routinely refuse to admit them into the proceedings. There is no provision at all under the URS for further arguments to be taken into account.
- Consider whether the case is really appropriate for a domain name dispute resolution procedure
In particular, the adjudicators point out time and time again that the dispute procedure is not a substitute for court action. Trade mark infringement does not equate to bad faith or abusive domain registration (and vice-versa).
- Be aware that when filing a UDRP or URS complaint you must submit to the jurisdiction of the court in the Respondent’s home country or the country where the registrar is based (or both) in respect of any challenges to the outcome of the dispute.
The UDRP and the URS both incorporate provisions which allow a Respondent potentially to frustrate the dispute procedure by commencing related proceedings in court. This means that, simply by filing the complaint, a Complainant is opening itself up to the risk of being dragged into costly (and most probably international) court proceedings.
Complainants should research their Respondent and, if necessary, consider launching court proceedings as a first strike rather than commencing a domain name dispute. In that way, the decision about jurisdiction will be entirely in the Complainant’s control.
When using the UDRP, the URS and the EURid ADR, be aware that there are a number of entities who provide dispute resolution services within these schemes. It is important to pay attention to which provider you use as it could have a material effect on the outcome.
- Follow the guidelines closely
The domain name dispute resolution bodies often provide extremely detailed guidelines on how a complaint should be submitted, and the type of evidence they expect to see in a complaint. Fail to follow this at your peril! While these guidelines can be very detailed, they are extremely helpful and if you follow the guidelines, there should be no reason for your complaint to fail. There is only ‘one bite of the cherry’ in relation to domain name disputes, so failing properly to follow the guidelines can be fatal to challenging a domain name successfully, for all time.
- Research your opposite party
Often you will find that opposite parties were involved in domain name disputes before, and it is always useful to see how they have approached the cases and whether they have been successful. You are quite likely to get some guidance from this type of exercise as to whether your dispute is likely to be successful. For example, if you find that your respondent has unsuccessfully defended other domain name dispute cases, then that fact will be of particular importance to include in your complaint. Conversely, if you find that the respondent has always successfully defended any domain name dispute brought against the domain owned by him/her, you should consider whether filing a complaint is actually a worthwhile course of action.
- Pre-action correspondence
Most domain name dispute systems do not recognise the “without prejudice” rule and the adjudicator will be keen to look at any evidence that points towards the parties’ intentions and motives – even if these were statements made during settlement negotiations.
UK trade mark law allows for a person receiving unjustified threats of trade mark infringement to seek redress in the court. Therefore, alleging trade mark infringement in pre-action correspondence is risky as it provides the Respondent with an open goal if they are looking for a cause of action to commence related court proceedings (and thus try to frustrate the domain dispute procedure).
- Beware of scam organisations
Fraudulent/misleading approaches concerning domain name and trade mark registration services continue to be a real headache. Always be wary of any company you don’t know contacting you to offer these services.