Perhaps you’ve read stories about companies that have been forced to pay out large sums of money to buy ‘their’ domain names from private individuals or domain pirates? How can this happen? What are the rules about this? And who benefits from the way the rules are devised? These are some of the questions we’ll be looking at in today’s blog post.
If you look at the terms and conditions of top-level domains (TLDs), you’ll see that most apply the ‘first come, first served’ principle. This principle is as simple as it sounds – the person that applies first is free to register any unused domain. This is the case in Sweden for example, with our .se domain, as well as with the Danish .dk and the global .com. This means that nobody is overseeing the registration process of domains, in terms of establishing who has the best claim to a specific domain (although there are a lot of ‘companies’ out there – often in Asia – who will claim to have received a request to register your trademarks but who just wanted to double-check with you before they proceed. This is something we’ll return to in another blog post).
OK, got it. But what if someone has already registered “my” domain? What happens then?
If you have a specific domain in mind that someone else has registered, then there are three alternative actions you can take:
- You can buy the domain directly from the owner.
- You can hope that the domain becomes available for you to register – for instance, if the current owner forgets to pay for their domain and allows their registration to expire.
- You can enter a dispute resolution process to prove that you have the right to that domain name.
For many, paying the current owner or waiting for them to miss a renewal payment are not attractive options.
That leaves the third option: dispute resolution
To take a dispute forward, you must be able to answer ‘yes’ to these three questions:
- Do you have a link to the domain name – does the domain match your company name or one of your trademarks, for example?
- Can you show that the current holders do not have a legitimate connection to the domain?
- Can you show that the current holders have acted in bad faith with their registration and ownership of the domain – by attempting to profit from the reputation of one of your trademarks, for example?
I don’t have a case, what can I do now?
One suggestion would be to make an anonymous bid for the domain. Start low and try to evaluate what the domain would be worth for you.
Are you planning on using it as your primary domain, as the outward face of your company? What are the risks if you aren’t able to get hold of the domain? Are you likely to lose sales, confuse your customers and damage your visibility on search engines? If there is pay-per-click advertising on the website, is income being generated that should rightfully go to your company?
Answering these questions can help you weigh up the benefits – it may be worth making a one-off payment to acquire the domain.
I have a case – let’s go!
If you believe you have a good chance of taking back the domain via dispute resolution (that is, if you answered yes to all three questions), then we suggest that that you send a warning letter to the domain holder, via an agent or some other intermediary. In this letter, you should make it clear that you have a legitimate link the domain name and ask the current party to voluntarily transfer the domain.
Before sending this type of warning letter, you should document any contextual evidence that strengthens your assertion that the domain is being used in bad faith. Take a screen dump of the website, for example, and make a note of any sponsored links on the domain.
Be aware: this process takes time!
Oftentimes you’ll find yourself dealing with actual domain pirates – individuals who are deliberately acquiring domains for illegitimate reasons. To make things harder for you, the holders might move the domain to a new domain provider after they receive a warning letter. If this happens, according to current regulations, you will have to re-start your dialogue with the domain holder by sending out a new warning letter. The domain holder can also change the ownership of the domain in whois, so that the defendant in effect becomes a new legal entity. This is known as ‘cyberflight’, and the outcome for you is likely to be legal costs and time-consuming procedures.
For domains with the .se TLD, you can go ahead with the so-called Uniform Dispute Resolution Policy (UDRP) if the owner ignores your warning letter. This costs 10,000 SEK for a limited company (an ‘aktiebolag’ in Swedish) with more than 10 employees. You can also expect to pay a fee to the agent helping to process your dispute.
The fact is that many of the individuals and groups that speculatively buy up and manage high volumes of domains in Sweden have a very good awareness of the current legal situation. If they receive a query about a domain where your dispute has a good chance of succeeding, the domain owner may offer to sell the domain at an attractive price to avoid the cost and hassle of the dispute process. The more unlikely it appears that a dispute will be settled in your favour, the more money they can demand from you for the domain. Simple.
So what should I do then? I can’t afford to register my trademarks under 1,400 new top-level domains.
Make an analysis to work out which of the new TLDs could be important for your business, now and in the future. Few companies register their products and trademarks under all new TLDs.
What more do I need to think about?
A smart approach is to be proactive and register domain names for relevant trademarks and markets as early as you can. This can save time and money, and it also ensures that you don’t end up supporting domain pirates. In reality, similar rules and conditions apply for the .se TLD, as do for many other geographical TLDs such as .dk, .no and so on.
With the ongoing launch of new TLDs, logging your trademarks in the Trademark Clearinghouse register can be a good investment. By doing this, you’ll get first dibs on registering your trademarks as domain names under the 1,400 new TLDs, such as .shop and .web.
What can Dotkeeper do to help?
Bring your case to our experienced consultants. An initial survey and recommendation is always free with us.
We can also help you with the dispute resolution process or with contacting and negotiating with the current domain holders, as well as advising on how to evaluate your domains.
If you want to take a firmer grip of your domain portfolio, Dotkeeper can also help you to map out the domains that match your trademarks, and monitor them to help you identify any copyright infringements.
Dotkeeper can also help you with a holistic approach to your domain portfolio, where we together develop a strategy and proactively ensure that you stand as the owner of your desired domain names, now and in the future.
You can find ongoing and completed dispute resolution proceedings for the .se domain here: iis.se