In some cases it can be necessary to involve the law when domain names have not been protected effectively.
It is important to note that trade mark registration doe not give the holder of the trade mark an automatic right to any domain name containing that mark. Possession of a trade mark is just one of three requirements to win a domain name via ICANN’s Uniform Dispute Resolution Policy (UDRP) - which governs the ownership of all generic Top Level Domains (.aero, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel) – or via the U.S. Anti cyber squatting Consumer Protection Act (15 U.S.C. sec. 1125). The other 2 requirements are:
a) the registrant of the domain has no legitimate interest in the domain;
b) the registrant has evidenced bad faith in registering the domain
Details of domain dispute decisions under the UDRP are available on the World Intellectual Property Organization (WIPO) website.
Some country code extensions also have their own dispute procedures, such as EURid (.eu registry) Alternative Dispute Resolution Policy and Nominet UK (.uk registry) Dispute Resolution Service Policy.
Case Studies
The cases below highlight some of the things that can arise when your name has not been protected. Not matter how large or small your organisation, there are many
ways you can lose out by not owning the most relevant domains to your business.
Tesco Affiliate Income Scam
By using domain names such as TescoDiet.com, TescoDVD.co.uk and TescoJersey.com a member of Tesco's Affiliate scheme raised it's monthly commission from £75 in April 2005 to £26,688 in May 2005. Read the full Tesco article...
BT and Virgin Cybersquatting Abuse
A cybersquatter registered BT.com and demanded money from British Telecommunications to prevent the domain name from being sold to a competitor or adult-content website. Read the full BT article...
Furniture Manufacturers Fail to Get Trade Mark Name Transferred
Danish furniture manufacturer Skovby had registered the Community trade mark "Skovby" and the respondent in the case was a web designer who had registered the name skovby.co.uk to at a page on his client’s site that sold Skovby furniture... Read the full Skovby article...