In part one of this series, we explored how to choose the best domain name for your brand, as well as how to protect and monitor your chosen identity. Now, we’ll explore what happens if the worst does happen, and somebody registers a domain name using your brand or trademark.
There are many classes of trademarks and many different jurisdictions in which they might be granted, and the advent of the internet means businesses operating in different fields in different parts of the world now bump into each other online in a way they never would have done in the purely physical world. This can cause disputes – for example, our domain Dispute Resolution Service saw an (unsuccessful) complaint by a South African sports clothing retailer against a UK business using the domain “extreme-direct.co.uk”. Both businesses had been established for years in their respective markets, but the internet creates new avenues for collision as businesses expand into each other’s sphere of operation and target markets.
As of the end of May 2015, ntldstats.com reported a total of over 5.8 million new gTLD domains registered. A large proportion of these were given away for free (with some companies automatically registering a free domain for customers who hadn’t actually requested one), so the number of actual websites using a new gTLD is likely to be far smaller – some estimate as low as 3% of that four million. Regardless, disputes have already begun, with Playboy magazine taking legal action against the registrant of playboy.london – a London property developer who considers himself to be something of a playboy.
Once you have identified a problem, you need to assess your options. Firstly is the behaviour you have found actually losing you sales or otherwise confusing your customers? Whilst it is incumbent on brand owners to police their own brands, you need to be able to prioritise your resources. It may be worth keeping a watching brief on low profile or very minor or arguable infringements, and more cost effective to actively promote your own brand as a response. However even if you decide to not to take any action in the first instance, take screen shots of any web sites, search engine results and domain registration records. Evidence is vital and any type of formal action will require the brand owner to prove their case and demonstrate that they have the evidence to back up any complaints.
It is usually advisable to see whether there is a straightforward and amicable route to resolving a dispute in the first instance. A surprising number of potential disputes are sorted out at an early stage, saving everyone time and legal costs.
Where there are disputes over web addresses, there are a variety of well-developed alternatives to formal court action. These include the Uniform Domain Name Dispute Resolution Process and its country code equivalents. A huge amount of advice and history of previous cases is available online.
In terms of disputes over unfair trading, trade mark infringement and other content complaints, the position is more complicated. This is primarily due to the international nature of e-commerce and the fact that the party you are in dispute with is in a different jurisdiction from the UK which can be quite daunting. Whilst it is not for the faint hearted, the UK has an excellent reputation for providing effective remedies for intellectual property infringement. A recent report by the US Chamber of Commerce Global IP Center places the UK second only to the US in terms of the strength of its IP laws, and the UK has “an advanced and highly sophisticated IP legislative framework, and enforcement levels are high”. Cost effective remedies may be sought in the Intellectual Property Enterprise Court, including a streamlined small claims procedure for disputes where the amount in dispute is less than £10,000 and parties don’t need to be legally represented.
Future developments
Of particular interest to brand owners will be the uptake and usage of personalised ‘.brand’ top-level domain names, such as .nike or .google, which allow as many short, on-point web addresses as they wish –for example, “www.run.nike” for running shoes. Many familiar global brands have already signed up – over 600 in total, including Google, Apple, Amazon, HBO, Barclays, Nike and Visa. Nominet itself is working with top brands including the BBC, Bentley and Comcast to provide the registry services and technical infrastructure for their .brand domains. Many others will be thinking seriously about a ‘.brand’ domain as part of their longer-term digital strategy.
Likely benefits from a brand protection perspective include the prospect of full control over their own territory on the web - they decide what’s registered, it’s their space, they own it. A brand registry operator can use their .brand top level domain to make it clear to their customers that they are visiting or purchasing from an authentic website (or, conversely, when they’re not). On the other hand, the high cost of running a .brand domain means it won’t be for everyone. The application fee to ICANN (who oversee the domain name system) was $180,000 during ‘round one’ of the programme, though this may reduce during a hypothetical ‘round two’, expected in 2018.
Overall, there are huge possibilities and opportunities for brands online. As we move into the Internet of Things and the possibility of fully connected homes and cities, the pace of development is set to accelerate. We’ve only taken a few tentative steps into the new digital age.
By Nick Wenban-Smith, Senior Legal Counsel at Nominet.
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