Facebook and Instagram successfully recovered more than 100 domain names recently from a business that was selling Facebook and Instagram ‘likes’ and ‘followers’.
Social Marketing Madness had registered domain names that included the words Facebook or Instagram along with generic terms like ‘buy cheap likes’.
Facebook brought the complaint before the World Intellectual Property Office’s Arbitration and Mediation Center. WIPO determined that the domains were registered in bad faith, because the domains were being used for commercial gain and there was no other possible reason for their existence than to mislead consumers and take unfair advantage of the goodwill of the marks.
What to do if someone has a domain name incorporating your brand name?
If you discover that someone has registered a domain name incorporating your brand name, you might want to recover the domain. It’s worth noting that if you have a distinctive name that you have registered as a trademark, it will be a lot less costly and much simpler to recover the domains than if you’re relying on unregistered rights. (The below video explains how to choose a name that can function as a trademark)
The starting point is to decide whether to use the court system by litigating in the courts or whether to initiate the dispute-resolution procedure available for the particular domain suffix. Each domain has its own dispute resolution procedure. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) – which for .co.uk domains is Nominet – allows the person claiming rights in a name to apply under the relevant Domain Registrant Scheme, for domains registered in ‘bad faith’ to be transferred or cancelled.
Two of the benefits of arbitration over litigation are that it is generally cheaper and faster. The fees for filing a dispute-resolution claim are lower and you will not need to go to the expense of legal proceedings.
However, the main limitation of using the dispute-resolution scheme is that if you are successful, you can only expect to get the domain name transferred to you. The tribunal does not have the power to award any monetary damages.
One of the benefits of litigation over dispute-resolution is that there are a large number of remedies available, including damages. It’s also possible to get an undertaking from the squatter not to register any names in the future that infringe on your trade mark rights. Additionally, cybersquatters often have to pay your legal fees too in addition to transferring the domains. A few years ago Microsoft took legal action against cyber squatters in the USA, UK and other EU countries, to recover its domains and claim damages.
How to win a domain name dispute?
To win in this type of dispute you will need to prove three elements, namely that:
- you have prior rights in the name;
- the owner does not have rights in the name; and
- the domain name was registered and is being used in bad faith.
To initiate an action, start by collecting evidence. Are there references on the website to you or to your competitors? Check the whois facility to find out who owns the domain name.
Check the date when the domain was registered to the current owner. If they registered the domain name after you began your business, or registered your trademark the case is much easier to prove.
Once you file a dispute-resolution procedure or initiate court proceedings, the domain is locked so that cyberflight (whereby the registrant transfers the domain to a third party) is no longer a serious risk.
As mentioned, to succeed in a domain dispute, it helps to have a trademark registration. This can make short work of the requirement to demonstrate rights in the name. Otherwise, you will need to establish that you have goodwill in the name.
If the domain name you are using for your brand is purely descriptive, there is little you can do to stop others using a similar domain name.
The message to take on board is that having a distinctive name which is protected by a trademark is an absolute essential in the digital economy. If a name isn’t descriptive, and is legally available, it means you can protect it and have exclusive rights over it. This makes it easier to have a unique online brand because if others are “passing off” your brand by registering your name as a domain, you are in a strong position to recover it from them
You don’t have to be a well known mark to be able to take action in the way Facebook has recently done.