• home page
• about the firm
• press office
• contact us
• business sectors
• practice areas
• seminars
• publications
• recruitment
• trainees
• technology

terms & conditions

• legal updates
• bulletins
• service overviews
• transaction updates
• consultation papers
• library
• podcasts
• join our mailing list

|

Domain name news

Cybersquatting on the rise

The World Intellectual Property Organisation (WIPO)'s Annual Summary 2006 has revealed a 25% increase in the number of domain names disputes since 2005.

 

"Cybersquatting" consists of registering trade marks as domain names for the sole purpose of selling them for profit to trade mark owners.

 

Various factors can explain the increase in "cybersquatting" practices such as the use of computer software to automatically register expired domain names, the growth in the number of accredited registrars and of professional domain name dealers generally and the establishment of the new gTLDs, all create greater opportunities for mass registration of domain names and abusive practices. This phenomenon is exacerbated by the fact that service providers increasingly offer "privacy services" allowing individuals to register a name by proxy and thereby hide their identity.

 

WIPO offers a quick and cost-effective dispute resolution procedure under the Uniform Domain Name Dispute Resolution Policy (UDRP), enabling trade mark owners to obtain redress.

 

In order to succeed, the complainant needs to prove that the registration was made with the intention of taking advantage of the complainant trade mark owner's right in the name. In that respect, in 2006 WIPO confirmed that failure to conduct prior checks for third-party rights in certain circumstances would represent "wilful blindness" representing bad faith under the UDRP (Mobile Communications Services Inc v WebReg RN, WIPO case no. D2005-1304).

 

Unfortunately, mass registration of domain names is a lucrative business and the WIPO dispute resolution services are likely to be kept busy in the foreseeable future!

 

Nominet introduces a new standard registrar agreement

Nominet, the not-for-profit company which manages the administration of “.uk” domain names, has introduced a new registrar agreement following a consultation in 2006.

 

Nominet deals with over five million domain names and is the world's fourth largest Internet registry. Nominet's relationship with registrars is set out in a standard contract and standard terms and conditions.

 

The aim of the new standard agreement, which came into effect on 1 March 2007, is to raise standards in the industry, set out the basic level of services and conduct that registrants can expect and to clarify registrars' obligations to Nominet and to registrants.

 

Design rights and domain names

In a recent decision, the ADR Centre for “.eu” domain names rejected a claim for the revocation or transfer of the domain name "webtv.eu". The complainant was the proprietor of various registered rights including a Community registered design which shows a stylised embodiment of the word "web" with the words "tv" written within the "b" of "web"), which he asserted gave him rights in the said domain name.

 

Under Article 21 of EC Regulation 874/2004, any domain name will be revoked if it is identical or confusingly similar to a name in respect of which a right is recognised by national and/or Community law and (among other things) it has been registered or is being used in bad faith. Article 10 of the Regulation provides that prior rights include, for example, trade marks, trade names, company names and family names.

 

A design right, as the name suggests, confers a right in the design and not in the name. In the Panel's view, Community design rights do not come within Article 10 of the Regulation and therefore do not give rise to rights which would enable the complainant to challenge the registration of the .eu domain name.

 

(Rupert Beckwith-Moore v Novak Antonio, Case 03299, 29 January 2007)

 

Premierleaguetickets.co.uk

Nominet has found that although the FA Premier League had rights in respect of the name or mark "Premier League", which is similar to the domain name “Premierleaguetickets.co.uk”, the domain name in question in the hands of the respondent was not an "abusive registration". Nominet therefore refused to transfer the domain name in question to the complainant.

 

The respondent relied on the fact that its name had been previously registered with Companies House as "Premier League Tickets Limited" and that it therefore had "been commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name in question" and that no evidence of bad faith could be shown.

 

(The F.A. Premier League Limited v Premier League Tickets, DRS 04232, 17 February 2007)

 

For further information on domain names please contact Virginie Courmont.

 

 

---

 

 

The content of this quarterly update is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.