Disputes over Internet domain names

What is a domain name?

Without going into technical details, a Domain Name is the “address” of a resource on the Internet. For example www.velascolawyers.com is the address of Velasco Lawyers website and [email protected] is the email address of the Velasco Lawyers Webmaster. They both use the velascolawyers.com domain. Without the domain names (and all the information coming from the different domain name servers) a computer wouldn’t know how to locate the IP address, MX records (identifying the mail server responsible for accepting email messages) or other identifiers, be it a web page, an email server or any other type of internet resources.

Domain names are structured hierarchically. At the top level we can have:

• Generic top-level domains groups like for example .com, .biz, .info .org, .edu, .net or .mil.
• Country code top-level domains like .uk, .dk or .es. (in this example UK, Denmark and Spain)
• Regional generic top level domains like .eu and .asia (European Union and Asia).

Secondary names are added to the top-level domains making the base Internet address. For example the combination of a secondary level name “Velascolawyers” with the “.com” top level domain makes the full domain name “velascolawyers.com”.

The registration process

An individual or an organization can register a domain name through a “registrar” that will make the necessary administrative procedures for obtaining the domain and configuring it (most of the time completely online through the registrar own website). The registrar will be certified by the different organizations managing the top-level domains. For example .com, .net and .org domains are managed by ICANN (Internet Corporation for Assigned Names and Numbers), .es are managed by the NIC (Network Information Center of Spain), .uk are manage by Nominet UK, .dk by DK Hostmaster while EURid manages the .eu domain. Thus a registrar selling .com, .es, .uk, .dk and .eu domains will need certifications from ICANN, NIC, Nominet UK, DK Hostmaster and EURid.

These managing organizations set different rules and requirements on the registration. For example, while anyone can register a .com domain, an .eu domain can only be registered by an individual or organization residing in the European Union.

Domain name disputes

Domain names are in general assigned using a first come first served approach. This lead to a phenomenon called “cybersquatting”. A cyber squatter is a person that registers a domain name in bad faith, in order to harm an organisation or to gain an economical advantage. This happens when an individual buys a domain containing a company brand name and then offers to resell the domain to the company for a fee. Alternatively a person could buy a domain name in order to harm an organisation. For example a competitor could buy the domain velascolawyers.es and redirect the traffic to its own website.

For example the domain peta.org (People for the ethical treatment of animals) was bought in 1995 by Michael Doughney who created a website called “People Eating Tasty Animals”.

Another variant of the same problem is called typosquatting. In this case a person (for example a competitor) could buy velascolawyer.com or velascolaw.es. In practice a slight variation or misspelling of the brand name in order to profit from the confusion with the brand.

Another problem is when different people are legitimately competing for the same domain name. For example under the name Delta we have many different companies ranging from airlines to credit cards passing through hotels and utilities. In this case it is quite difficult to decide who is the legitimate owner of delta.com.

Legal actions

As Internet usage grew, domain name became a strategic asset for any organisation. These forced legislators worldwide and top-level domain administration organisations, to act and to enforce laws and policies.

When you find that your own name or brand name has been used in a domain name registered by another person, you have the right to take legal actions in order to challenge the ownership of the domain.

In case of dispute there are two ways to approach the problem:

1. Turn to courts
2. Turn to registrars or top-level domain administration organisations and follow their dispute policy.

Resolution of the dispute in court

Many countries have a specific legislation related to cybersquatting and typosquatting like in the US the Anticybersquatting Consumer Protection Act of 1999. If no specific legislation is in place, trademark laws can be used to gain control of the offending domain name. In general the “bad faith” of the registrant will have to be demonstrated. For example the Anticybersquatting Consumer Protection Act specify a list of factors, both demonstrating the good faith or the bad faith of the registrant:

Arguments supporting the good faith of the registrant

1. The person registering the domain name has trademarks or intellectual property rights in the domain name
2. the domain name contains the name (legal or common) of the registrant
3. the registrant’s prior use of the domain name in connection with the bona fide offering of goods or services;
4. the registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name;

Arguments supporting the bad faith of the registrant

1. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
2. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
3. the registrant’s providing misleading false contact information when applying for registration of the domain name;
4. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others;

Neutral arguments

1. the extent to which the mark in the domain is distinctive or famous.

Depending on the country the process could be very long, sometimes even few years.

Resolution of the dispute through domain administration organisations

A faster way to deal with the dispute is to take advantage of the different domain name dispute policies of the organisations assigning domain names like ICANN and EURid. All these policies are slightly different but they have in common three aspects:

1. The plaintiff owns a trademark that is the same or similar to the second level domain name registered
2. The registrant has no right or interests in the domain name
3. The domain name is registered or used in bad faith

Bad faith can be demonstrated in different ways. For example:

• The registrant has put the domain name on sale for a fee much higher than the nominal registration fee.
• The registrant is systematically engaged in a pattern of registering trademarks of other companies
• The registrant is using the domain name to disrupt the business of a competitor
• The registrant is trying to attract visitors to a site leveraging on the confusion with the legitimate brand owner

Armed with the proper pieces of evidence the lawyer challenging the offending domain name ownership can get a resolution of the problem in two to 6 months depending on the organisation assigning the domain name.

Which type of resolution is the best?

Choosing the way to approach the case depends on the type of evidences that can be collected and the urgency of the matter. The lawyer handling the case for you will be able to advise you. Keep in mind that you will need help from a lawyer specialised in Intellectual property Law and Internet law. For disputes over the .es domain you will need a lawyer fluent in Spanish, as the proceedings will be in Spanish.