Evicting the cybersquatters

The right domain name can be crucial to the success of a Web site, but getting hold of the perfect name is not always easy -...

The right domain name can be crucial to the success of a Web site, but getting hold of the perfect name is not always easy - especially if someone else gets to it first.

A number of organisations systematically register various famous trademarks or trade names as domain names and attempt to sell them to their rightful owners. This process is commonly known as "domain name grabbing/ hijacking" or "cybersquatting".

Most businesses are now aware that they have the right to take legal action against any organisation that registers a domain name in an attempt to rent it or sell it to its rightful owner, but when it comes to taking action the options can be confusing. There are a number of ways that a dispute resolution can be processed, and there can be considerable time and cost savings to be made by proceeding via the right channel.

In order to regain possession of a domain name, businesses should consider the following points:

Court action
To take action in the English/ Welsh courts against a cybersquatter, a business will have to prove that there has been an infringement of its trademark or that there has been confusion caused for a customer, linked to its reputation. Generally, this confusion must have caused damage to the business or be considered to injure its goodwill.

Traditionally, high-profile companies have tried to enforce their domain name rights through the courts, but this can take time and incur considerable expense. It can make sense to opt for an online solution. The pros and cons of online resolutions versus court action have to be weighed up according to each individual case.

Online resolution
If the domain name being reclaimed has a .com or .org suffix, the Uniform Domain Name Resolution Policy (UDRP) should be followed. The business making the claim must be able to show that the organisation that registered the Web address has no legitimate interests or rights in the domain name. Also, the URL must have been used in bad faith, for example, for sale purposes or to intentionally attract users by creating confusion.

Once a complaint is registered, the address owner is given an opportunity to respond. The process takes between 45 and 60 days. The fees are fixed at $1,500 (£1,075) for one arbitrator or $3,000 for three. In successful cases, the domain name can be cancelled or transferred to the complainant.

If the domain name has a .co.uk suffix, Nominet's dispute resolution policy should be followed. As with UDRP, after notifying Nominet of a complaint the owner has a short period to reply. The parties then enter into an informal mediation. If this fails, the complainant pays fees of £750 and an expert is appointed to decide the issue.

The procedure takes about 40 days. To succeed, the complainant must show that the Web address was registered in a manner that took unfair advantage of or was unfairly detrimental to their rights.

Rulings
With Nominet there is a right of appeal and with both Nominet and UDRP the decision can be overruled at any time by a court judgement. In complex or vital cases, it might be sensible to opt for a court case straight away, as the Nominet or UDRP decision may be disputed.

As the online solutions are in their infancy, it may well be sensible to utilise the court route if a domain name is an essential part of your organisation's branding.

By Charlotte Walker-Osborn, lawyer at Eversheds www.eversheds.com
Information on Nominet can be found at www.nic.uk/ref/drs-policy.html
Details of the UDRP are at www.icann.org/udrp/udrp-policy-24oct99.html

Taking action: court or online resolution?
Court

Advantages
  • Subject to any appeals, the decision is final

  • With a strong case, companies should be able to obtain an interim injunction pending trial

Disadvantages
  • Potential jurisdictional issues

  • Can be expensive and time-consuming


Online resolution
Advantages
  • Simple, fast, cost-effective

  • Can be submitted electronically

  • No lengthy discovery/ passing of documents

  • Fewer potential jurisdictional issues

Disadvantages
  • In the UK, online arbitration does not stop a party bringing a claim in the courts, so there could be extra expense involved.

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