2014 was a milestone year for domain disputes. The .uk domain space was a busy one last year as it experienced its 10,000th domain dispute – a high profile case brought by former member of boyband JLS, Aston Merrygold, who won the rights to astonmerrygold.co.uk. The domain had been registered on the day the group appeared on The X Factor final, and then offered back for sale to Mr Merrygold. That case sits alongside so many other interesting cases we’ve seen from around the globe, from multinational corporations to local businesses.
But what’s in store for the world of domain name disputes next year?
From a broader perspective, many more new generic top-level domains (gTLDs) are expected to move into general availability, including some of the most interesting ideas such as .music, .shop, .web and .app, which had multiple bids to run them by the likes of Google and Apple. This will provide a more rigorous test of the new rights protection countermeasures imposed by the Internet Corporation for Assigned Names and Numbers (ICANN) as part of the new gTLD programme.
We have already seen the first high profile dispute in the .london gTLD, involving Playboy magazine and an individual who sees himself as a playboy, and we expect to see more of those types of dispute, in which there could arguably be a legitimate generic use of a domain.
ICANN has mandated that all domain disputes under new gTLDs will be handled by its Uniform Domain Name Dispute Resolution Policy (UDRP), so it will be interesting to see how many disputes emerge, and how the landscape will change. With so many new domains to launch, and plans for another round of new gTLD applications on the horizon, companies that haven’t yet registered their brand names with ICANN’s Trademark Clearinghouse would be wise to do so even if they don’t intend to defensively register their brand names across multiple gTLDs. Registration with the Clearinghouse means that at least brand owners will receive an alert if anyone tries to register an exact match of their brand name under one of the new gTLDs.
Within the .uk namespace, we are still in the first year of availability for the new, shorter .uk domain. It launched in June 2014 with a five year reservation period, so that anyone with an existing .co.uk registration will have a long period of time to decide if they want to take it up. However, if you’re in the market for a new .co.uk now and want to keep your options open to use the shorter .uk equivalent in future, we’d strongly recommend that you consider registering that now too to avoid any disputes further down the line.
Another event next year that could spur a round of domain disputes is the UK general election. Every election seems to prompt a round of candidates and parties registering names of their opponents, and we expect no different next year. There’s precedent for this sort of political dispute - the Sutton Borough Liberal Democrats once won a domain dispute against the Carshalton and Wallington Constituency Labour Party who had registered suttonlibdems.org.uk as a domain name and pointed it at site urging people to vote Labour. I wouldn’t be surprised if we saw a rise in political themed domains and similar disputes passing through the DRS this year, especially with the party votes so close and the outcome so difficult to predict.
There is no doubt that the domain landscape is evolving fast and, in general, I’d say that businesses are far more aware than they ever have been around domain disputes, and of the damage that can be done to a brand in the event of an abusive registration or other dispute. It was a busy, yet successful year for domain disputes in 2014, and no doubt there will be more challenges to oversee this year in 2015.
By Nick Wenban-Smith, Senior Legal Counsel at Nominet.
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