Avoid domain name conflict with a few simple steps
When Apple recently won a high-profile adjudication against a
small UK company in a dispute about the ownership of a domain name,
the decision provided food for thought for businesses trading or
looking to set up shop on the internet.
The case centred on the registration by CyberBritain Holdings of
the www.itunes.co.uk internet domain. Despite the domain having
been registered two months before the launch of Apple's own site,
www.itunes.com, Nominet - the UK body responsible for ruling on
such disputes - concluded the computer giant had brand rights and
found in its favour.
So does this mean that the principle of "finders keepers" does not
apply to domain name registrations? It is certainly finders keepers
at the outset. All that has to be done is to check that the
selected name is still available, and then register it.
Things get more complicated when the successful registrant receives
a notice from another party alleging a better claim to the domain
name. Where an amicable agreement is not reached, matters may
proceed to court or be decided under a dispute resolution
policy.
Dispute procedure
Nominet rules on disputes concerning .uk registrations. To succeed,
anyone applying for the transfer of the registration must show they
have similar or identical rights to the registered domain name: for
example, a trademark or established trading name. They must also
show the registration was "abusive", by demonstrating, for
instance, that the domain was registered in a bid to sell it to the
complainer.
In the Apple case, the domain name was handed over because of
CyberBritain's "bad faith" in using it merely to redirect users to
another of its sites, having previously tried to sell the
registration to Apple for £50,000.
For top-level domains, such as .com, the dispute procedure is
governed by the Uniform Dispute Resolution Policy (UDRP), which is
administered by the Internet Corporation for Assigned Names and
Numbers. The essential points to consider here are whether the
domain name in question is identical or similar to the
complainant's trademark; whether the company that has registered
the domain has a legitimate interest in the name; and whether there
is a suggestion of bad faith behind the registration. If the expert
finds for the complainant on all three points, the domain name will
be transferred.
Although both these procedures are used widely, they are not law
and occasionally the courts have departed from their approach. Most
notably, this happened in the "sucks" cases, where a well-known,
trademarked name was registered with the suffix "sucks" in a bid to
undermine the relevant company.
The practice under the UDRP has been to order the handover of such
sites to their respective trademark owners, but a US court recently
declined to do this. It argued the site, as registered, was not a
commercial one and so could not be said to be infringing the
trademark owner's rights. This differing viewpoint from that under
the UDRP can lead to confusion.
Protecting chosen names
Although the element of bad faith meant CyberBritain Holdings lost
its right to the itunes registration, it raised the question of
what companies should consider when setting up a website. How can
they protect their chosen name, especially when they may be unaware
of new services that have yet to be launched?
It is important to carefully consider the name being selected and
conduct a search to ensure it is available. Think about why the
name has been chosen - does it relate to a company product, to an
established trading name, or its own trademark?
Another useful precaution is to conduct a search on the public
registers to check the chosen name does not conflict with any marks
already registered at the Patent Office or company names registered
at Companies House. Although a match here will not necessarily rule
out the domain name, it will highlight any potential clashes.
By following these simple steps, companies should be able to
safeguard their domain name registration and strengthen their
position in the event of an Apple-type challenge.
Gillian Cameron is a partner and IP specialist with corporate
lawyers Maclay Murray & Spens
www.patentoffice.gov.uk
www.companieshouse.gov.uk