UK: Disputes & Litigation Over Domain Names

Last Updated: 5 July 2001

An ever increasing problem on the Internet is the ‘theft’ of trade marks. For a while now "cybersquatters" have been registering domain names which are similar or identical to trade marks and then attempting to extort money from legitimate proprietors of those trade marks in return for transferring the domain names to them.

This problem has reached such alarming proportions that it has necessitated concerted action from international supervisory authorities, like the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organisation (WIPO) and national courts to thwart the menacing activities of these cybersquatters.

There are a number of ways in which this problem can and is being dealt with. At the international level both ICANN and WIPO have standing dispute resolution methods in place to ensure that trade mark owners are protected. At the national level the courts have employed both trade mark law and the common law of passing off to frustrate cybersquatters.

ICANN & WIPO Disputes Resolution System

The 'UDRP'

Both ICANN and WIPO have in place the Uniform Domain Name Dispute Resolution Policy (UDRP). It has an approved list of dispute-resolution service providers (‘Provider/s’). In order to hear complaints, Providers have appointed individuals to be members of a panel, which will hear and determine complaints. When a complainant makes a complaint that he has proprietary interest in a domain name which has been registered by a respondent, he may initiate an administrative proceeding by submitting a complaint to a Provider whether in writing or in electronic form. The complainant must also serve the complaint on the respondent. The complainant can decide on whether he wants the matter to be dealt with by a panel of one or three. He must include the particulars of the respondent, the domain name, the registrar who obtained the registration, and most importantly, ‘specify the trade mark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used’.

Critically, it is also necessary for the complainant to describe the grounds on which the complaint is made, including:

  • the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
  • why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
  • why the domain name(s) should be considered as having been registered and being used in bad faith’.

Thus, so long as a trade mark or brand owner can demonstrate that the domain name held by the respondent is identical or confusingly similar to his trade mark, that the respondent has no rights or legitimate interests in the domain name, and that it was registered and is being used in bad faith, a domain name can be cancelled, transferred or otherwise changed.

When this process is satisfactorily completed, the Provider sets down the commencement date of the administrative proceedings. Within 20 days of the date of the commencement of the proceedings the respondent is given an opportunity to respond. If there is no response, ‘in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.’ The cost of the panel must be borne by the complainant, unless it is the respondent who asks for a three-man panel, in which case, the fees must be shared equally.

The panel determines the admissibility, relevance, materiality and weight of evidence. The whole proceeding is documentary and, as a general rule, there are no ‘in-person hearings’. The decision of the panel must be rendered to the Provider within 14 days of the appointment of the panel. The panel has the power to order the transfer of the domain name to the trade mark holder or cancel it altogether. However, if the panel finds that the complaint was made in bad faith, for example in an attempt at Reverse Domain Name Hijacking (i.e. ‘using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name’) or was brought primarily to harass the domain name holder, the panel can declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.

Establishing Trade Marks Under UDRP

If a trade mark is registered, it is fairly easy to show its existence in an UDRP proceeding. However, if it is not registered there could be difficulties. Be that as it may, in a WIPO arbitrator’s decision in Jeannette Winterson v Mark Hogarth (Case No D2000-0235) where the name of the complainant, a famous English writer, was registered under various categories by the respondent, it was held that the lack of registration did not matter because trade marks in the context of the UDRP are ‘not to be construed by reference to the criteria of registrability under English law, but more broadly in terms of the distinctive features of a person’s activities’. There are, unfortunately, contradictory decisions (see, for example, Gordon Sumner, aka Sting v Urvan [Case D2000-0596]).

Identical Or Confusingly Similar

Aside from establishing the existence of the trade mark, whether registered or not, the complainant in a UDRP proceeding must also demonstrate that the domain name is identical or confusingly similar to the complainant’s trade mark. This may not be as easy as it sounds if the decision of the English High Court in Avnet Inc v Isoact Ltd [1998] FSR 16 is anything go by. In that case the defendant was an ISP that used the domain name ‘avnet.co.uk’ and the plaintiff was the owner of the trade mark ‘Avnet’ and was involved in the software and electronic components business. The plaintiff argued that search engines would send potential customers to the defendant’s website thereby causing confusion and loss of potential customers. However, the court disagreed and ruled that a customer could immediately see that the defendant’s website was the wrong site because it offered different goods and services and so there should be no confusion.

No Rights Or Legitimate Interests

It also falls on the complainant to prove that the domain name holder has no rights or legitimate interests in respect of the domain name. However, under the UDRP, a domain name holder can show that he has rights or legitimate interests in the domain name by establishing one of the following:

  • that he used or prepared for use the domain name in connection to some bona fide goods or services before notice of the dispute; or
  • that he has been commonly known by the domain name, despite the acquisition trade mark rights by the complainant; or
  • that he is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark.

Bad Faith Registration & Use

Moreover, the complainant must prove that the domain name was registered and is being used in bad faith. Under the UDRP evidence of bad faith may be shown, among others, in the following ways:

  • where the circumstances indicate that the domain name holder had registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or to a competitor, for valuable consideration in excess of his costs directly related to the domain name; or
  • where the domain name holder had registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that he had engaged in a pattern of such conduct; or
  • where he had registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  • where he used the domain name, intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the trade mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his web site or location.

This is not an exhaustive list.

As to the question of using the domain name and what it means, the leading case on point is the famous ‘One in a Million’ case ([1998] FSR 265; The Times, December 2, 1997, at 8). In that case the English Court of Appeal rejected the argument of the defendant that since it had merely registered certain famous trade marks as domain names without more, it had not used them. It was held that the mere fact that the defendant (domain name holder) had sought to sell the domain names that are confusingly similar to the registered trade marks, was enough to establish threats to infringe, albeit in respect of the UK Trade Marks Act 1994, and therefore could be construed as sufficient use.

That same point was reiterated by an UDRP panel in the case of World Wrestling Federation Inc v Bosman [Case No D99-0001], namely that the mere attempt to sell a domain name to the registered trade mark owner reveals bad faith use. Accordingly, it was held that the domain name holder was a ‘cybersquatter’ who had "used" the domain name in bad faith.

In another UDRP case, Telstra Corp Ltd v Nuclear Marshmallows [Case No D2000-0003], the panel was faced with a domain name registrant who did not even offer to sell it to the trade mark owner of a well-known trade mark. Nevertheless, it was held that the question was whether it can be said that the domain name holder, in all the circumstances, even without positive action, can be said to have acted in bad faith. Therefore, under certain circumstances the inactivity of the domain name holder can amount to bad faith use!`

Trade Marks Law

Purpose

The fundamental object of the trade mark system is to distinguish your goods or services from your rivals and thereby avoid confusion with other products or services. It, therefore, protects against deceptiveness as to the origin of goods. A trade mark is ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’ [section 1(1) Trade Marks Act 1994 (TMA)].

Registration

In order to avail oneself of the protection granted to trade marks under the TMA, it is necessary first of all to make sure that the trade mark is properly registered. This may be to state the obvious but there is often confusion with other intellectual property rights like passing off, copyright, confidentiality and design rights which do not require registration. Such registration grants the registered proprietor the ‘exclusive rights in the trade mark which are infringed by the use of the trade mark in the [UK] without his consent’ [section 9(1)]. Thus, registration grants a statutory monopoly to use of the mark. This means that the registered proprietor can use the registration to prevent others from using the same or similar mark on the same or similar goods or services.

Infringement

Secondly, the defendant’s use of the trade mark must fall within the definition of infringement as outlined under section 10 of the TMA. A person can be said to have infringed a trade mark in the following circumstances:

  • If he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
  • If he uses in the course of trade a sign where because it is identical with or similar to the trade mark and is used in relation to goods or services similar to or identical with those for which the trade mark is registered, ‘there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.’
  • If he uses in the course of trade a sign which is identical with or similar to the trade mark, and is used in relation to goods or services which are not similar ‘where the trade mark has a reputation in the [UK] and the use of the sign without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of the repute of the trade mark.’

Trade Marks & Domain Names

In Harrods Ltd v UK Network Services Ltd (1997) EIPR D-106, the ‘Harrods’ name, which was a registered trade mark, was registered as a domain name by the defendant. Harrods sued for infringement of trade mark. The court ordered the domain name to be transferred to the plaintiff because there clearly was trade mark infringement under section 10 of the TMA. So in the Harrods’ case the court was prepared to protect the registered trade mark without evidence of actual use of the domain name.

Further, in Bikemart v Gallagher & Williams [1999] the registered proprietors of the trade mark ‘Bikemart’, who also published a cut-out portion of a magazine known as ‘Bikemart, were able successfully to sue a defendant who had registered the domain name of ‘www.bikemart.com’. The website advertised space for motorcycle accessories. It was held by the court that there was clear infringement of the trade mark and ordered the transfer of the domain name to the trade mark owners.

The Law Of Passing Off

The alternative way to protect a mark, which has been registered as a domain name by someone else, that is being used by a business, whether or not it is registered as a trade mark, is to employ the tort of passing off. It is a mechanism for protecting the goodwill that has arisen in a business name.

Traditionally, in order to succeed in obtaining an injunction against a rival for passing off, you need to establish the following:

  • that there was a misrepresentation
  • which was made by a competitor in the course of his trade
  • to his potential customers
  • which was calculated to injure your business and goodwill
  • and which causes actual damage or is likely to do so to your business or goodwill

It is critical that it is shown that your rival is unlawfully assuming your goodwill as his own. It is not enough that customers are in a state of confusion about your goods or services and the goods or services of your competitor.

Thus there are three elements which must be established by a claimant in a passing off action:

  • he must establish a goodwill or reputation attached to goods or services which he supplies in the mind of the purchasing public by association with identifying ‘get up’ as distinctive specifically of the claimant’s goods or services
  • he must demonstrate a misrepresentation by the competitor to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are goods or services of the claimant
  • he must demonstrate that he suffers or that he is likely to suffer damage

Hence, the essence of the tort of passing off is a misrepresentation to the public which is liable to lead them to believe that the goods or services offered by your rival are in fact yours.

However, a further aspect of this tort which has been recently resurrected in the domain name disputes area. This arises in situations where a competitor puts or authorises someone to put an ‘instrument of deception’ into the hands of others. And even where there is no immediate placing or authorising of an ‘instrument of deception’ into the hands of others, so long as there is a likelihood of such action in the future, passing off is committed. For example, if a person registers a well-known domain name for the sole purpose of selling it to another person at a high price so that the latter could use it dishonestly, that is enough, without more, to amount to passing off. This even if he has done nothing with it as yet. This certainly is the impact of ‘One in a Million’ case.

This means that a company’s reputation and goodwill can now be protected through passing off, even if the traditional elements are not met. This is because where trade names are well-known household names and the defendant intends to use that goodwill and threatens to sell it to another who might use it for passing off to obtain money from the true owner of that trade name, the registration of such trade names (the ‘instruments of fraud’) will amount to the commission of the tort of passing off. This is because the value to the defendant who registers such names lies in the threat that it would be used in a fraudulent way.

It is now, therefore, possible for registered trade mark owners as well as others to thwart cybersquatters from maintaining ownership over domain names on the basis that there may be future passing off. This is because the courts are prepared to extend passing off to those who merely threaten to sell domain names to others.

Conclusion

It is a fact that despite the seeming increase in the activities of cybersquatters over the last three years, there has been no discernible increase in domain name litigation. One reason for this is the fact that more are turning to ICANN or WIPO to make use of the UDRP, which has been streamlined over the years and is credible. Further, it does seem that over the last year cybersquatting activities have lessened and this must be due to the media onslaught against such activities.

It is this heightened awareness of the these cyber-pirates which has prompted the two registry operators, NeuLevel and Afilias, of the two new generic top-level domain names (gTLD), .biz and .info, respectively, to introduce initial registration processes which allow trade mark owners to stake their claims before anyone else has the chance to do so. By this way, the threat of the cyber-piracy of domain names will be considerably lessened in the future.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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