Domain Disputes and How to Handle Them
There are around 300 million registered domains on the internet, and approximately 25 million new ones are registered every year. Inevitably, there is intense competition for some of the most recognizable words, and most brand names are already taken.
Domain registrants and trademark holders often clash on the right to own a particular domain. Disputed domains may be registered by accident, or registered with the intention of extracting money from the trademark holder. In the early days of the World Wide Web, obtaining a trademarked domain without authorization became known as "cybersquatting." People who owned these domains either wanted to profit from a sale, or asked for large charitable donations in return for the domain name.
One of the most famous examples is mcdonalds.com, which was originally owned by a journalist, Joshua Quittner. McDonalds wasn't interested in owning the domain initially, but later changed its mind, and tried to force Network Solutions to hand it over. At Quittner's request, the company eventually donated $3,500 to a grade school (PDF) in return for its branded domain.
As brands became more aware of the internet, more of these cases hit the headlines. Since 1999, many countries have brought in anti-cybersquatting laws to try to prevent domains being bought up by opportunist owners. This has provided a legal framework for the processing of many domain name disputes today.
How the Domain Name Dispute System Works
If you believe somebody owns a domain that you have the legal right to own, you will need the paperwork to prove it. In most cases, that means you'll need to own the trademark for the word or phrase in the domain.
Disputes will usually be looked at by an impartial person, or a panel.
Cases are sometimes decided according to whether the registrant was acting in "bad faith." Bad faith has slightly different definitions in different countries. But it essentially means that the registrant did one or more of these things:
- Purchased the domain to sell it for an inflated fee, knowing that it was trademarked
- Wanted to cause a particular brand inconvenience by buying the domain first
- Intends to damage the reputation of a person or business by publishing something on the domain that would harm them
- Cause confusion among people who are looking for a legitimate website
- Use the domain to compete unfairly with another business
- Act abusively or unfairly in some other way.
The dispute resolution process may also consider whether the registrant has a history of registering domains in bad faith.
If the domain's owner can prove that they purchased in "good faith," this is likely to weight the case in their favor. Proof of good faith may include:
- A genuine reason for purchasing the domain
- A noncommercial venture that has legitimate claim to the word or phrase
- Ownership under the concept of Fair Use.
Not all dispute resolution panels will use the same parameters, though. The dispute policy document will explain exactly how cases are analyzed.
If the dispute resolution process doesn't cover your situation, you do still have the option to go to court. Sometimes, trademark law will offer more suitable protection.
How to Begin a Dispute
If you own a trademarked word or phrase, the law grants you specific rights to use that trademark exclusively. In some countries, additional laws specifically guard against the use of a trademarked domain by someone other than the copyright holder.
Some of the countries that have these laws share a set of World Intelectual Property Organization (WIPO) rules call the Uniform Domain Name Dispute Resolution Policy (UDRP). Other countries have their own set of rules. We've summarized both of these below. The one that you should follow is determined the TLD, or last section of the domain name.
1: The Uniform Domain Name Dispute Resolution Policy
The UDRP is an initiative by the Arbitration and Mediation Center at the World Intellectual Property Organization. You can read the full wording on the ICANN website.
The UDRP covers any dispute for gTLDs: .biz, .com, .info, .mobi, .name, .net, and .org, and is designed to resolve disputes without the need to go to court.
In each country, the ICANN-accredited registrar is responsible for handling dispute resolution under the UDRP, and anyone cam start a dispute, regardless of where they live.
2: ccTLD-specific Resolution Policy
Some countries have developed their own rules or laws to manage domain name disputes. Some lean on the basic wording of UDRP, with their own modifications.
France (.fr and .re)
France does not use the UDRP. It has its own rules for its ccTLD domains. This is set out in article L.45-2 and L.45-6 of the Post and Electronic Communications Code (CPCE), and the dispute process is known as PARL EXPERT.
To raise a domain name dispute under PARL EXPERT, you must prove that you have the rights to use the name, and the right to own a domain in France or Reunion Island.
China is one of many countries that uses "bad faith" as guidance in resolving domain name disputes.
Complaints can be filed with any of the Dispute Resolution Service Providers accredited by China Internet Network Information Center (CNNIC). The CNNIC then forms a panel consisting of up to 3 people, and will hear the case within 14 days.
Unless otherwise agreed, cases are conducted in Chinese. However, guidance is available in English on the CNNIC website.
United Kingdom (.uk)
The UK's domain registrar, Nominet, has its own Dispute Resolution Service. It also has its own dispute policy, which you can access on its website.
Once a claim is filed on the Nominet website, the registrant has a limited time to comment on the claim. Nominet then passes the case to its mediation service.
Mediation is free, unless the claimant and registrant don't agree on an outcome, or the registrant doesn't respond. If either of those things happens, Nominet charges a fee for a judgement from one of its Experts. This is optional.
After a judgement, there is an appeals process, but it's much more expensive than the Expert judgement, so it's wise to try to reach a resolution before this stage.
The Belgian domain registry, DNS Belgium, says that domains are registered on a "first come, first served" basis, and any disputes should be managed between the registrar and the person that owns the rights to use the domain.
If this initial discussion fails to solve the problem, the claimant can bring their complaint before a judge in court, under the Procedure Act of June 2003 (BSJ. 09.09.2003).
For this to go ahead, the domain must be identical to a "brand, geographic location or original name, trade name, an original work, name of a company or association, family name or the name of a geographic entity" -- or close enough to cause confusion. The registrant must not have a legitimate claim, and it must have acted in bad faith.
Alternatively, the Belgian Centre for Arbitration and Mediation (CEPANI) can begin a dispute resolution procedure. This takes a maximum of 55 days, and the conditions for a claim are the same as the Procedure Act route. Disputed .be domains are assessed by a legal decision maker.
Compared to other countries, filing a dispute is costly, although its appeals process cost is roughly in line with other countries we looked at.
Note: CEPINA does not deal with .vlaanderen or .brussels domains. However, the Procedure Act can be used to raise disputes about those, and other gTLDs, providing the registrant's home or business is in Belgium.
Italy handles .it domain disputes through its own registrar. You'll find a number of guidance PDFs on its website.
The rules are similar to the UDRP, and can be overseen by any accredited DRS provider. This could be a lawyer, for example. This person or panel decides whether the name should be re-assigned. If the answer is yes, the original registrant must provide written proof that they have the right to use the domain within 15 days.
Austria, like Belgium, encourages all parties to try to reach an amicable resolution. If they fail, the country's domain name registrar, NIC.AT, will not intervene, and it has no official dispute policy.
However, NIC.AT can place the domain in a special holding bay, assigning a "Wait" status. While the domain is in this holding bay, the domain can be used, but not transferred, unless the transfer is to the other party in the dispute.
Domains can only be held like this for a maximum of two months, unless there is a pending court case, or the domain dispute is being passed to an arbitrator. When this happens, the dispute resolution board or court decides who the domain belongs to, and the domain can be left with the "Wait" status indefinitely.
In the Netherlands, complainants can start a dispute if a domain is identical (or very similar) to a trademark or personal name in the Netherlands. The complainant needs to prove that the registrant has no rights to use the name, and is using it in bad faith. Evidence must be provided to the WIPO Arbitration and Mediation Center in Switzerland.
Within 3 days, assuming the complaint is valid, the domain will be locked, and the clock starts ticking. The registrant gets 20 days to respond, and the complainant must pay their fee once that time elapses.
Mediation is provided by SIDN, the Netherlands' registrar. Mediation is free, and the window for mediation lasts for a maximum of 90 days.
SIDN has produced clear advice on the process (PDF), including a step-by-step guide of how disputes are managed, and a full glossary of terms.
- UK Domain Name Dispute FAQs: LawDonut offers guidance for UK businesses only, focusing on the legal aspect of domain name ownership.
- Domain Name Disputes — Internet Library of Law and Court Decisions: This guide explains some UDRP panel decisions in US domain name disputes. This article is from 2008, but still offers some clues as to how cases are resolved.
- WIPO Domain Name Dispute Resolution: The WIPO Arbitration and Mediation Center handles domain name disputes for gTLDs and many ccTLDs. This website offers a complete guide to the process.
Domain name disputes can be lengthy and costly, but most countries have efficient processes to deal with them. A dispute will almost certainly cost you more than the original registration fee, but for many businesses, the extra cost will be worthwhile to protect their brand.
If you're thinking of registering a domain name with the intention of coaxing money from a brand, be warned: the system will not look upon it favorably. Even a legitimately registered domain could be snatched away if the competing business really cares about its intellectual property.
Further Reading and Resources
We have more guides, tutorials, and infogragphics related to running a website:
- Secrets of a Killer Blog Post: this short video explains how to create great blog posts.
- 7 Reasons People Don't Trust Your Website: our infographic on how to improve your online credibility.
- Freelance Writer and Blogger Career Information and Resources: learn all about becoming a professional writer or blogger.
How to Choose The Perfect Domain Name
Now sure what domain name you should choose? Check out our video, How to Choose The Perfect Domain Name. It provides the basic things you need to consider before you take the plunge.