Domain name disputes on the rise

Nominet, the profit for a purpose company responsible for running the .UK namespace, has just released its 2017 annual summary of domain name disputes brought before its Dispute Resolution Service (DRS) which seeks to settle domain name disputes efficiently and cost-effectively. 

According to Nominet, in 2017, a total of 712 complaints relating to 783 domains were made.  This represents just 0.0065% of registered UK domain names.  Over half of the complaints (55%) in 2017 resulted in a domain name being transferred.  By comparison, in 2016, there were 703 complaints of which 53% resulted in a domain transfer.  2017 also saw an increase to 15% in the number of disputes resolved with the domain name being voluntarily transferred to the complainant by the respondent upon the respondent receiving the complaint.  In 2016, just 10% of complaints were resolved in this way. 

Brands such as HMRC, Gumtree, Victoria’s Secret, Jaguar Land Rover, Clydesdale Bank Plc, Virgin Enterprises Limited, Moncler S.p.A. and Sony used the DRS in 2017.  The most common industries to use the DRS were the automotive, electronics, fashion, retail and banking and finance.  2017 saw cases brought by complainants from 29 different countries, led by the UK followed by the USA, Germany and France.  Respondents came from 34 different countries again led by the UK followed by the USA and China.  The overall average length of time DRS cases take from being filed to closed was 57 days. 

The Victoria’s Secret dispute was an interesting case.  The complainant was Victoria’s Secret, the American designer and manufacturer of women’s clothing and beauty products.  The respondent was a beauty therapist operating a salon in Mayfair, London who had registered the domain name victoriasecretbeauty.co.uk.  The respondent claimed not to have known about the Victoria’s Secret brand at the time the domain name was registered.  This claim was dismissed by Nominet as “not credible” particularly as the respondent was operating in the field of beauty services.  Therefore, the domain name victoriasecretbeauty.co.uk was transferred to Victoria’s Secret. 

A domain name is the part of a URL (the address through which a website is accessed e.g. myerson.co.uk) which is unique to a particular website.  Each domain name must be unique so that no two domain names are identical.  As the internet has become more commercial and widely used, the value of domain names has risen and therefore the number of conflicts.  As a domain name is often used to identify the source of information on a website, in effect, a domain name can be used as a trade name or trademark.  Therefore, domain names can be capable of being registered as trademarks. 

Dealing with domain name disputes can be technical and complicated and are dealt with by specialist Courts in England and Wales or by specialist organisations such as Nominet and ICAAN.  Our specialist intellectual property solicitors can provide you with swift advice in regards to your domain name dispute.  If you would like to speak to one of our specialist IP solicitors in our Dispute Resolution team please contact us on 0161 941 4000 or email us at lawyers@myerson.co.uk.