6 Jul 2022

The IPR Help Desk's Domain Name Primer

Circle of 12 gold stars on a blue background 

Jane Lambert

The IPR-Helpdesk is an EU-funded service that supplies information on intellectual property to small and medium enterprises.  It carries out research into IP, publishes regular newsletters and other publications and holds webinars and other events.  Among its most useful publications are infographics that communicate essential information in a digestible format.

The latest of those infographics is on Domain Names and Cybersquatting which can be downloaded free of charge from the EU Publications Office.  That document explains what is a domain name, what is meant by the terms TLD (top-level domain), second-level domain and third-level domain and the difference between generic and country-code top-level domains.  It discusses how to register domain names, the practice of cybersquatting and what can be done to prevent it.

Readers who require further information on domain names, cybersquatting and dispute resolution may read my articles on Domain Name Disputes and Dispute Resolution Policies and Domain Name Glossary.  The Uniform Domain Name Dispute Resolution Policy is one of the most successful alternative dispute resolution schemes in the world.  For a few hundred United States dollars, trade mark owners or those who could bring an action for passing off can apply for the transfer or cancellation of a domain name that is the same as or confusingly similar to their trade mark. 

Such applications come before administrative panels (of which I am one) who decide whether the domain name is the same or confusingly similar to a trade mark in which the complainant has rights,  whether the domain name holder has any rights or legitimate interests in the disputed domain name and whether the domain name was registered and is being used in bad faith.    If the panel finds in favour of the complainant on all those issues he or she can order the transfer of the domain name to the complainant or its cancellation,   The whole process is completed within a matter of weeks.   Usually, far less time than would be required for a claimant to issue and serve proceedings in the English courts and for the defendant to respond.   

The UDRP has been adopted by many other domain name registries including Wales (see my articles Welsh Top Leval Domain Names  12 April 2019 and Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  13 April 2019 NIPC Wales).  Many others such as Nominet regulates the ".uk" space and the Swiss domain name authority have similar policies.   To see how the process works just read my decision in Re D2022-1858 lancastersarchery.com.

Readers may be interested to learn that I do not confine myself to deciding domain name disputes.  I also advise and represent parties to such disputes.   As a panellist, I know exactly what the tribunal that will decide the dispute is looking for.   Having such insight, I can usually offer a much more successful and cost-effective service than most others.   Those who want to learn more can call me on +44 (0)20 7404 5252 or send me a message through my contact form.

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