Domain names are a vital asset to any business. If a domain name should fall into the wrong hands as a result of the "first come, first served" registration requirements, there can be enormous damage in terms of lost sales, reputation and goodwill. As a result, domain names are frequently becoming the focus of a rising number of disputes with competitors, or in some instances opportunists trying to extract a financial payment for "abusive registrations" in return for the transfer of ownership of the domain name to which they have no obvious entitlement (often referred to as "cybersquatters").

Pannone's Intellectual Property team has significant experience in assisting clients to reach a successful resolution of domain name disputes and allegations of abusive registration and are well placed to assist those seeking further guidance in this area. Where it is appropriate to refer the dispute to the Dispute Resolution Services of either Nominet or WIPO (see further below), we can act for you in relation to the referral and advise on and prosecute appeals where necessary.

Nominet or WIPO complaints

If domain name disputes cannot be resolved informally then they can be adjudicated upon by the court. If the primary objective is recovery of the domain name (rather than damages or an account of profits for any infringement) then most disputes can be quickly and cheaply resolved by the filing of a complaint to the Dispute Resolution Service. In the case of .co.uk dispute resolution would be dealt with by Nominet. The World Intellectual Property Organisation (WIPO), deals with disputes involving other top level domains, and in particular .com.

The dispute is dealt with by an independent expert appointed from a panel without any hearing being necessary (other than in exceptional circumstances) with all submissions and communications being transmitted on-line, including the decision. Where the expert finds that the registration of the domain name is "abusive" in the sense that its registration or use is likely to give an unfair advantage to the registrant or will be detrimental to the business of the applicant, the domain name may be transferred to the applicant. Evidence of an abusive registration can include an offer to sell the domain.

Proceedings through these bodies can also assist where the registrant of the domain name is located abroad and issues of jurisdiction might otherwise arise in respect of a claim issued in the courts located in England and Wales. These Dispute Resolution Services cannot, however, award damages, an account of profits or an injunction against the opponent (to prevent registration of other similar domain names in the future) and consequently if such issues are the primary concern then court proceedings may be the preferred option.

The reason for the referral of disputes to these bodies is that the costs involved in proceeding with a complaint to either Nominet or WIPO are generally very significantly lower than court proceedings. The only compulsory costs are the fees of the dispute resolution service.

Parties involved in Nominet or WIPO complaints do need to consider the value of the domain names to the business prior to assessing whether they wish to seek legal representation as legal costs are not recoverable from an opponent even if the complaint succeeds. Detailed guidance has been provided by both Nominet and WIPO as to the relevant tests for determining whether the registration is an abusive one and what a complainant must show in order to succeed with a complaint.

Our experience

We recently acted for a well known company specialising in mobile marketing and communications technology in successfully resisting a complaint filed with Nominet. The other party (a large German telecoms company) argued that our client's registration of a domain name several years earlier was an "abusive registration" which infringed their intellectual property rights. We were successful in demonstrating that the registration was not an abusive one and that there was no obligation on the client to transfer the domain name to the opponent. This decision was upheld when the unsuccessful opponent tried to reargue it on appeal. The Nominet decision is highly significant as it provided definitive guidance on the admissibility of "without prejudice" communications entered into between parties in contemplation of litigation (which did not in fact transpire) in Nominet proceedings.

To arrange an appointment with a solicitor in our Dispute Resolution team, please fill out our enquiry form or call us on 0800 840 4929.