“A website is a window through which your business says hello to the world.” It’s little wonder, therefore, that 83.4% of UK businesses (with 10 or more employees) now have a website.”
According to the latest figures from Statista, the number of companies with an online presence has grown by nearly 15% since 2007. With the growth of social selling also on a steep upward trajectory, with £3.6 billion being spent last year on social media advertising in the UK, the importance of online has never been greater.
While the statistics for being online are compelling, there are many factors that need to be considered to ensure your online presence is both profitable and effective. Rather like the sign above the shop door, it’s all in the name, or rather domain name when it comes to having an online presence. Your domain names are valuable assets which need to be protected. As such, it’s important to understand what potential issues may arise for any business which relies on them, while also understanding preventative action and options available when things go wrong.
What is a domain name?
A domain name is unique and made up of two components: a top-level domain (TLD) and a second-level domain. By way of example, in pannonecorporate.com. the “.com” is the TLD and “pannonecorporate” is the second-level domain.
On acquiring a domain name, the registrant enters into a contractual relationship with the registrar and in return obtains the exclusive right to use the domain name.
However, it’s important to note that registration of a domain name does not equate to a right to use the name registered exclusively, i.e. it is not a trade mark. Using the earlier example, registration of pannonecorporate.com would not prevent another business from using the name Pannone Corporate. It’s therefore important to consider registering corresponding trade marks for your business name and brand.
What are the potential issues?
Cybersquatting is potentially hugely problematic and involves the opportunistic registration of a domain name with the intent to profit from the goodwill of another company’s trade mark.
Issues can arise for example where an individual purchases a domain name which uses the second-level domain alongside a different TLD, for example pannonecorporate.firm, in order to redirect traffic to a fraudulent website. This could create a real headache for retailers, as customers can be misled into making purchases from the fraudulent website, which may be selling counterfeit or substitute goods. The domain name may also be used as a sponsored link, which enables the owner to earn click-through revenue.
Alternatively, the fraudulent website could be used as a scam to obtain bank details and other information from misled customers. Consumers’ details collected at fraudulent websites may be used to wrongfully register other domain names.
Issues of this nature are potentially damaging from both a commercial and reputational perspective but can also lead to costly and time-consuming litigation in order to recover the relevant domain name from the cyber squatter.
How do I avoid domain name disputes?
The first step is to work out what domains you actually have and make a detailed schedule setting out what domain names you own, where they are registered and with whom. The second step is to work out what domains you may need and then register them. For example, consider registering brands, company names, slogans and project names.
You should, however, avoid defensively registering all possible domains. Defensive domains are unlikely to be worthwhile, except in a few limited circumstances. The first is where there is a large corporate transaction, such as two companies merging. The second is in the case of typo squatting. You may consider registering a domain name with an obvious typo, in the hope of acquiring web traffic e.g. panonecorporate.com. The third is in the case of spoofing. Cyrillic spoofs look identical to the regular alphabet, but they are not. A computer can tell the difference, but a user cannot. It may therefore be an option to register the Cyrillic spoof of the relevant domain name.
A simple, but important step is to ensure domain name renewals are noted and actioned. One way to achieve this may be to appoint an in-house domains ‘champion’ who acts as the point of contact for all things domain within your business. Ensure this individual has the appropriate training and task them with monitoring and implementation of the domain name strategy. This may also include ongoing monitoring of domain name registrations, so that problematic ones can be picked up and addressed before any issues arise.
As well as in-house strategies, external tools can be useful. The Trade Marks Clearing House (TMCH) was created by the Internet Corporation for Assigned Names and Numbers (ICANN). Its enhanced membership provides access to useful tools which should be considered for ‘crown jewel’ marks. One such tool is the Trade Marks Claims Service. This sends a warning to the registrant if their intended domain name matches an entry in the TMCH and the registrant must acknowledge receipt of that warning before they are able to continue. The trade mark rights owner is also notified. In 2017, after notification, there was a 94% abandonment rate of domain name registrations.
What if there is a domain name dispute?
The most common mechanism for the resolution of domain name disputes is the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The WIPO Arbitration and Mediation Center (WIPO) deals with disputes under the UDRP. Once a complaint is filed, the respondent has 20 days to file its response. Whether a response is filed or not, WIPO will proceed to appoint an administrative panel. The panel is composed of one or three independent people. The panel will decide the dispute based on the information available to it. The panel cannot award monetary amounts but can require the disputed domain name be transferred to the complainant.
For .uk domain name disputes, Nominet offers a Dispute Resolution Service (DRS). DRS offers a free mediation service once a response is submitted so that the parties can discuss how they could possibly settle the dispute. If there is no response, or the case cannot be settled at mediation, the complainant can pay a fee to appoint an expert. The expert will make a binding decision about what should happen to the domain name.
Issues arise, however, where a complainant cannot determine who the respondent should be. This was complicated further by the GDPR, as registries have a wide discretion as to what information they provide in respect of domain names and registrants. Registries often choose not to disclose the registrant of a domain for fear of breaching GDPR. If you can show a legitimate interest, such as the need to file a UDPR case, you can contact the registrar and request disclosure of non-public information so that you know who to launch a complaint against. Unfortunately, there is no guarantee that the registrar will respond or provide the information. The reality is that you will probably have to launch the domain name dispute without knowing the identity of the respondent. Providers will accept “redacted for privacy” as the respondent name at the outset, and this can be amended further down the line.
It’s all in the domain
Whether it’s your brand name, or the products you’ve created, protecting your business is vital. In an increasingly fast-paced and profitable online world, making sure that that protection extends to your digital assets is key if retailers are going to continue to benefit from having one foot in the high street and one foot online.
Melanie is a partner at law firm, Pannone Corporate, and works as part of the Intellectual Property Dispute Resolution team. She specialises in the resolution of disputes relating to intellectual property, reputation management, advertising, data protection, social media and trade libel.
Her focus is on the enforcement and protection of clients’ intellectual property and reputation, as well as brand strategy and management. She has particular experience in retail, fashion, manufacturing, technology, media and the creative industries.
Melanie is a member of the Chartered Institute of Trade Mark Attorney and the Licensing Executives Society.
For more information, visit https://pannonecorporate.com.