Domain name disputes: 20 FAQs

1. What is an internet domain name and how do they work?
2. Do we need to register a domain name?
3. How do we choose a domain name?
4. How do we check whether the name we've chosen is available?
5. What can we do if someone else has already registered the domain name we want?
6. How do we register a domain name?
7. Who should we use to register a domain name?
8. How do we buy a domain name from someone else who has already registered it?
9. How much does a domain name cost?
10. Once we have registered a domain name, what problems do we need to look out for?
11. What do we need to do to maintain our domain name?
12. What are the risks of getting into a domain name dispute and how can we minimise them?
13. How is it decided who has the best right to a disputed domain name?
14. What can we do if someone is using our trade mark to attract visitors to their website?
15. What should we do if someone is using a similar domain name to profit from our brand or take advantage of our customers?
16. What should we do if someone is using a similar domain name to abuse our business?
17. What dispute resolution procedures are there and how do they work?
18. Is it better to use a dispute resolution procedure or to go to court?
19. If we go to court over a domain name dispute, which country's laws apply?
20. What should we do if another business claims they have the right to one of our domain names?

1. What is an internet domain name and how do they work?

A domain name is the name (such as "ourcompany.co.uk") that you use in the internet address of your website and as part of your email address. Your domain name lets other people find your website or send emails to you. Each domain name has two parts. The first part can be any combination of letters and numbers, though most businesses try to choose a name that relates to them, such as the name of their company or product (see 3). The second part of the name shows which country the name is registered in or what kind of organisation is using it.

• There are different country codes for different countries, such as .uk (for the UK).
• Each of these country codes may be divided into sub-categories for different types of organisation. For example, .co.uk is used by businesses in the UK.
• There are also several international or 'generic' endings for different types of organisation as well as for US organisations (there is no US country code). For example, .com is the generic ending for businesses.

Some of these endings can be used by anyone, but others are restricted. For example, you can only register a domain name ending .aero if you are in the aviation industry.

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2 Do we need to register a domain name?

If you want to have a website it will need an address. Similarly, if you want to send and receive email, you will need an email address. Unless you register a domain name, you will have to use addresses offered by your Internet Service Provider (ISP). For example, your ISP might let you use the website address ourcompany.ispname.com and email addresses like yourname@ourcompany.ispname.com. However, addresses like these have several disadvantages:

• They do not give you a professional image. Usually, only very small businesses and individuals use addresses of this kind.
• If you change your ISP, you have to change your website and email addresses.
• Customers will not be able to find your website by simply guessing its internet address.

Registering a domain name, such as ourcompany.co.uk, helps overcomes these disadvantages. Choosing the right domain names can also help establish your rights to your trading names or trade marks (see 3) and prevent other businesses from using that domain name.

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3 How do we choose a domain name?

Your domain name is a marketing tool. Ideally, you want a domain name that reinforces your brand and is easy to remember. An obvious option is to base your domain name on the name of your company, a trading name you use, or a trademark you have registered. You will also need to decide which domain name ending to use (see 1). Most UK businesses prefer the endings .co.uk, or its international equivalent .com - an individual guessing your website address is most likely to try these endings. Other alternatives include .ltd.uk, .plc.uk, and endings like .aero or .pro for particular types of business (aviation and professional firms respectively). You can find a listing of the different .uk endings by visiting the website of Nominet UK, the organisation that administers most UK domain names. Go to www.nominet.org.uk and look under 'choosing your domain name'. For a list of generic international endings and other country codes, visit the Internet Assigned Numbers Authority website. You may want to consider registering several domain names. For example:

• You might want to register different domain names for each of your major brands.
• You may want to register using several different endings: for example, ourcompany.com, ourcompany.co.uk and so on. This makes it easier for customers to find your website, and helps stop anyone else registering domain names similar to yours.
• You may also want to register different spellings or common mis-spellings of your company or brand name.
• If you trade internationally, you may want to register the local versions of your domain name (e.g. ourcompany.co.fr) subject to any local restrictions on whether foreign businesses or individuals may register country code domain names.

You will only be able to register a domain name if it has not already been registered by someone else (see 4). There may also be restrictions: for example, the generic ending .aero can only be used by organisations in the aviation industry; and some countries only allow businesses in that country to register domain names with that country ending. You should also bear in mind that registering a domain name does not give you definitive ownership. Your registration could be challenged if someone else feels they have a better right to the domain name, or claims that you are misusing the domain name (see 13). So you should avoid registering any domain name that uses, or is very similar to, a competitor's trading name or trademark.

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4 How do we check whether the name we've chosen is available?

You can check whether a domain name is available using an online 'WHOIS' facility. The right one to use depends on the domain name ending you are interested in (for example, .co.uk).

• you can check most UK domain names (such as ourcompany.co.uk) on the UK domain name registry at www.nominet.org.uk
• you can check domain names using generic endings (which do not relate to a particular country, for example .com) on the public information site www.internic.net
• you can find information for other country codes (such as .fr) at www.iana.org
• many domain name registration companies offer a WHOIS facility on their website

Even if you are only planning to register one domain name, such as ourcompany.co.uk, it's worth checking variations of this name such as those ending .com. .ltd.uk, .plc.uk and so on. If any of these have been registered, you may want to investigate further to see whether there is likely to be any conflict between you and the organisation that has registered them (see 13).

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5 What can we do if someone else has already registered the domain name we want?

If the domain name is registered to another business which has a good claim to use it, your best option may be to choose another domain name. If you are starting a new business and your trading names are not yet established, you could also consider changing your trading names to match a domain name that is available. If, however, you still want a domain name that someone else has registered, you have two main options:

• you may be able to buy the domain name from the organisation that has registered it (see 8)
• you may be able to use a dispute resolution procedure, or take court action, to have the domain name transferred to you (see 14) if you have a better claim to the domain name - for example, because it uses a registered trademark belonging to you.

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6 How do we register a domain name?

Domain names must be registered with the appropriate domain name administrator - for example, .co.uk domain names are registered with Nominet UK. You do this by finding a domain name registration company to act as your agent. Most Internet Service Providers (ISPs), and many other companies, offer this service. Choose a company that is an accredited registrar, or an approved reseller for an accredited registrar, and that offers the right terms and conditions (see 7). The registration process is relatively straightforward. You will need to provide contact details, such as your name and address, and details of your ISP. You may need to pay a small registration fee (typically around £10), though if you are using the company for other services (for example, to host your website) domain name registration may be included in the package. You can usually complete all registration details, and pay the registration fee, online. It is important to be aware that registering a domain name does not mean that you own it. You will have to renew your registration periodically, and other organisations may challenge your right to the domain name (see 10). You should also check whether the agent or reseller you have used will use their own name (and contact details) as the registrant of the domain name or your name (see 7).

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7 Who should we use to register a domain name?

Use an agent that is an accredited registrar, or an authorised reseller for an accredited registrar. Most UK domain names are administered by Nominet UK. You can find a list of their approved registrars at their website, www.nominet.org.uk. For international domain names (such as .com), search the list at www.internic.net; for other country codes (such as .fr), look at www.iana.org. Carefully check the terms and conditions any agent uses for domain name registration.

• It is important that the domain name is registered in your name and with your contact details, not the name of the agent. This helps to protect your rights to the domain name and reduces the risk of administrative problems.
• Check that you will have the right to move your registration to another agent if you choose, and what the charges for doing this would be.
• Check what their charges are. As well as the initial registration charge, you will have to pay renewal fees and may be charged if you need to change your administrative details.

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8 How do we buy a domain name from someone else who has already registered it?

First, check that they have registered the name properly with the appropriate administrator. You can find registration details using a 'WHOIS' facility (see 4). Check also whether any related trademarks have been registered, or similar domain names. If so, the organisations that have registered these might have a stronger claim than you to the domain name. Even if you buy the domain name, you could be forced to give it up. If you have a good claim to the domain name (see 14), you should consider whether using a dispute resolution procedure, or taking legal action, would be a better way of acquiring it. Be aware that negotiating to buy the domain name will almost certainly mean that you would no longer be able to use a dispute resolution procedure to get it. Finally, if you do agree a deal, it is essential to ensure that the registration is properly transferred to you. As the whole process can be complex, you may want to use your adviser both to negotiate the deal and to ensure that the transfer is properly completed.

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9 How much does a domain name cost?

Registration fees are generally minimal. For example, many registration agents for .co.uk names charge around £10, or include the domain name as a free part of a service package such as website hosting. You will also have to renew your registration, typically every two years. Renewal fees are at a similar level. If, however, you are buying a domain name from someone else, the purchase price is a matter for negotiation. In the past, some particularly catchy domain names have been sold for tens or even hundreds of thousands of pounds.

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10. Once we have registered a domain name, what problems do we need to look out for?

It is important to understand that registering a domain name does not give you 'ownership' of it. You will have to renew the registration from time to time (see 11). You may also face a claim from another organisation that feels they have a better right to the name (see 13). You should also keep an eye out to prevent other people from trying to take advantage of you. For example:

• another company might register a similar domain name to try to steal your customers (see 16)
• someone might register a similar domain name to abuse your company, or try to blackmail you into buying the domain name from them (see 17).

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11 What do we need to do to maintain our domain name?

As part of the registration process, you provide administrative details such as a contact name and address, and technical information such as which Internet Service Provider (ISP) you use. It is essential to ensure that this information is kept up to date. You will also need to renew your registration periodically. A .uk domain name registration is valid for two years, and the holder, or 'registrant', has the first option to renew. Your registration agent will normally send you a warning notice when renewal is coming due, but renewal is your responsibility. You can 'positively renew' your domain name up to six months before the registration is due to expire. You also have a 30-day grace period after the registration expires in which to renew. Similar rules apply to other domain names, such as .com. In some cases, these need to be renewed on an annual basis. If you do receive a renewal notice, check it carefully and make sure that it is from your registration agent. Some unscrupulous businesses send letters prompting you to authorise renewal (with them). This allows them to take control of your domain name until you pay them a substantial fee. There have also been reports of scam renewal letters being used as a way to obtain credit card details. If you fail to renew the domain name in time, the domain name will be available for anyone to register and someone else might get there before you do.

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12 What are the risks of getting into a domain name dispute and how can we minimise them?

The main cause of domain name disputes is the registration of similar names. The best way to reduce your risk is to take great care over your choice of domain name. Although you cannot register a domain name that someone else has already registered, almost all registrars will accept domain names for registration that are similar to existing names. In addition, the proliferation of different domain name endings makes it even easier to register similar domain names: the fact that you have registered the domain name mycompany.co.uk will not stop another business registering mycompany.com, mycompany.ltd.uk and so on. To minimise the risk of a dispute, you should avoid registering a domain name that uses a competitor's trading name or trademark. As the internet is an international medium, you should ideally check trading names and trade marks internationally, particularly if you plan to register a 'generic' or international domain name such as mycompany.com. Be particularly careful about registering a domain name similar to a large company's name or brand. Even if you have a perfectly legitimate right to use the domain name, some large companies are aggressive about disputing rights to such names: even if you were to fight and win a dispute, you could face significant disruption and cost. If someone does challenge your right to a domain name that you have registered, or if you wish to challenge someone else's right to a domain name, you should seek legal advice as to your specific circumstances as soon as possible.

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13 How is it decided who has the best right to a disputed domain name?

Domain name administrators and registrars operate on a first-come first-served basis. Over time, using a domain name will in itself establish some rights to that domain name, particularly if you also publicise that domain name (for example, on your letterhead). However, the fact that someone has registered a domain name does not automatically mean that they have the best right to it. If the domain name incorporates a registered trademark, the owner of that trademark may well have stronger rights to the name. For this reason, you should consider registering your domain name as a trademark. In many cases, several businesses could have rights to a domain name, particularly when a domain name describes a product rather than using a company name or trademark. In practice, two other important factors come into play in many domain name disputes.

• You are more likely to win a dispute with someone who has registered a domain name if you can show that they registered it (or they are using it) in bad faith. Bad faith might include registering a domain name using your trade mark in order to sell it to you (or a competitor), or to pass their website off as being related to your business.
• Large companies, with deep pockets, may be prepared to run up large legal bills pursuing a domain name.

As disputes can be complex, you should take advice on your particular circumstances.

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14 What can we do if someone is using our trade mark to attract visitors to their website?

You are likely to have a strong claim against someone who registers a domain name using your trademark and then uses it to sell similar products. Even if they have some right to the domain name, you could take court action against them for breaching your intellectual property rights. The position becomes less clear-cut if the website does not relate to the products covered by your trademark. You will still have a strong claim if they are deliberately passing themselves off as being related to your business. Similarly, you may be able to take action against companies that use your trade mark in their websites: for example, so that an internet search for your trade mark comes up with their website. As this is a complex and changing area of law, you should take advice.

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15. What should we do if someone is using a similar domain name to profit from our brand or take advantage of our customers?

If they are using your trademark, or deliberately passing themselves off as being related to your business, you have a strong basis for using a dispute resolution procedure or taking court action against them. If they can claim that they are using the domain name legitimately, it may be much more difficult to take action against them. Rather than spending time and money on a dispute, you might be better off focusing on promoting your own domain name. An experienced advisor can help you decide whether you have a strong case and what the most appropriate course of action is. Separately, there can be cases where another domain name is being used to take advantage of your customers. An obvious example is 'phishing', where phoney emails and a rogue website are used to collect information such as credit card details or security codes. While you are not responsible for this, you may want to warn your customers if you become aware that this is occurring. You may also want to establish an appropriate security policy and tell your customers about it: for example, stating that you will not ask for financial or security details by email.

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16. What should we do if someone is using a similar domain name to abuse our business?

It is not uncommon for a disgruntled customer or employee to set up a website called something like yourcompanysucks.co.uk to abuse your company. You may be able to take action against them: for example, you could take court action if they have libelled your business. This will however involve costs, and may generate additional publicity for them. In many cases, your best course might simply be to ignore their activities.

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17. What dispute resolution procedures are there and how do they work?

Each domain name administrator has a dispute resolution procedure. For example, Nominet UK has a dispute resolution procedure for domain names ending .co.uk (and various other .uk endings). Each administrator's procedure will be slightly different, but they follow a similar pattern. Broadly, to make a claim you need to show that you have a right to the domain name (see 13), and that whoever has registered the name is using it 'abusively' or in bad faith. Costs and timescales vary. The Nominet UK dispute resolution procedure includes an initial free mediation service. Applying for a binding decision costs £750 (plus VAT), plus any legal fees you incur, and takes between 6 and 14 weeks. Appealing against a decision costs a further £3,000 (plus VAT). You can find out more from the relevant administrator:

• Nominet UK is the administrator for most .uk domain names.
• For names using other country codes, check with the appropriate administrator. See www.iana.org.
• For generic names such as .com and .org, visit www.icann.org.

Before starting a dispute resolution procedure, you should take advice on whether this is the best course of action and how best to proceed.

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18. Is it better to use a dispute resolution procedure or to go to court?

A dispute resolution procedure can only be used if you have rights to a domain name which someone else has registered 'abusively' or in bad faith. By contrast, court action can be taken on other grounds: for example, if someone is breaching your intellectual property rights or libelling you. In terms of outcomes, successful use of a dispute resolution procedure will result in the domain name being transferred to you. If you want to claim damages, you will need to take court action. Bear in mind, however, that it may be impossible to enforce judgment, particularly against individuals or companies based overseas. Where there is a choice, using a dispute resolution procedure is generally faster and incurs lower costs than going to court. In some cases, you might wish to use both: the successful outcome of a dispute resolution procedure can be presented as evidence in a court case. However, in some circumstances, you may need to seek an urgent injunction from the court, which if available may be obtained within a matter of days, although the legal costs will escalate very rapidly. As with any litigation, you should take advice on the best option and how to proceed.

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19. If we go to court over a domain name dispute, which country's laws apply?

A court case might be heard:

• In the country where the domain name was registered: for example, in the UK for a .uk domain name.
• In the country where the plaintiff suffered damage. For a libel case, this might conceivably be anywhere in the world where the website can be seen.
• In the defendant's home country.

The choice of country can make a significant difference to each party's costs, the prospects of success, and the likely scale of any damages. At the start of any international dispute, both claimant and defendant may present arguments to the court as to why it should or should not hear the case. Expert advice is essential.

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20. What should we do if another business claims they have the right to one of our domain names?

You need to assess the merits of their claim. You also need to think about the costs and likely outcome of any dispute resolution procedure or court case. Faced with the threat of legal action by a large, well-funded company, smaller businesses often decide that their best course is simply to concede a disputed domain name and to negotiate appropriate settlement terms. On the other hand, if you have invested significantly in building your internet presence, this may not be a satisfactory outcome - and you may have a strong case for defending a claim.

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