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IP Cases & Commentary – Details

25 March 2010

How to Challenge a .co.uk Domain Name

Gemma Kirkland

A domain name that has been registered using a .co.uk domain that is identical or similar to an existing prior right can be challenged by way of a domain name dispute resolution action. If successful, the domain name will either be transferred or removed from the Domain Name Register.

Complaints about .co.uk domain names are filed at Nominet, the company responsible for .co.uk domain names. The complaint must show that the party filing the complaint (the “Complainant”) has rights in respect of a name or mark which is identical or similar to the domain name in question and that the domain name is an “Abusive Registration” by causing unfair advantage or detriment to the Complainant.

Examples of “abusive registrations

  1. The domain name was registered by the owner (the “Respondent”) for the purposes of selling or transferring it to the Complainant for monies more than the usual costs of acquiring or using the domain name
  2. ?It was registered to “block” a name or mark owned by the Complainant
  3.  It was registered to unfairly disrupt the business of the Complainant
  4.  The domain name is being used in a way which has confused or is likely to confuse others into believing that the domain name is connected with the Complainant
  5. The Respondent has registered a number of domain names which include well known names or trade marks of other parties
  6. The Respondent provided false contact details when the domain name was registered
  7. The domain name was registered as a result of a relationship between the parties and the Complainant has been using the Domain Name registration exclusively and has paid for the registration and/or renewal of the domain name registration.

Once received by Nominet, the complaint will be sent to the Respondent within three days. The Respondent will then have 15 days to file its response.

The respondent will usually argue that the registration of the domain name was not “abusive”.

Examples of non-abusive registrations

  1. The Registrant has used or has made preparations to use the domain name in connection with a genuine offering of goods or services
  2. The Respondent is known by the name contained in the domain name or is legitimately connected with a mark which is identical or similar to the domain name;
  3. ?The Respondent has made legitimate non-commercial or fair use of the domain name;
  4. The domain name is generic or descriptive and the Respondent is making fair use of it;
  5. ?The ownership of the domain name by the Respondent is consistent with a written agreement entered into by the Parties; or
  6. ?The domain name is not part of a wider pattern or series of registrations because the domain name is of a significantly different type or character to other domain names registered by Respondent.

The Complainant will then be given five days to reply to the statements made by the Respondent.

The complaint will then be passed to a mediator who will speak with both parties to try and reach a solution to the dispute. Mediation usually lasts for two weeks.

If mediation is unsuccessful, or if the Respondent does not respond to the complaint, the Complainant will need to pay for an Expert to review the complaint and make a decision regarding the validity of the complaint. If an Expert is not appointed, the complaint will be deemed to be withdrawn and the domain name will remain in the name of the Respondent.

If the complaint succeeds, the Respondent will usually be ordered to transfer the domain name to the Complainant. If the complaint fails, the domain name will remain in the name of the Respondent.

The decision of the Expert can be appealed by either party within 15 days of the decision being issued.

There is no official fee for filing a complaint but an Expert will need to be appointed if the Complainant wishes to obtain a decision on the validity of the complaint. The cost of appointing an Expert is £200 for a summary decision or £750 for a full decision. If an appeal is filed, the cost of filing an appeal is £3,000. In addition to the official fees quoted above, we will charge for our services in drafting the complaint, responding to any response filed by the Respondent, drafting an appeal if necessary and reporting on the progress of the complaint. Depending on the nature of the complaint, our fees for all of the above are usually between £500-£1,000.

It is also possible to challenge a .com domain dame registration by filing a complaint at the World Intellectual Property Office (WIPO). For further details, please contact your usual D Young & Co advisor.

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