Whether developing a new brand or growing or protecting an existing one, a domain name strategy is vital. It can be catastrophic if a competitor (or trouble-maker) registers a domain name containing either the complete brand name or a clearly linked version of it. Equally, it can be hugely frustrating if you have spent time and money coming up with a marketable brand, only to find that someone has opportunistically registered that domain.
You should be able to negotiate with the registered holder of the domain to purchase it from them for a relatively reasonable price. What are your options though, if you are dealing with someone who tells you that either the domain is not for sale or wants to charge an exorbitant amount?
Before you make contact you should assess what rights you have to the domain. The key questions here are:
– Do you have a registered trademark? This is a big help. Consider registering one before taking matters further. If you have had problems with trademark registration, this may be a sign that you will have difficulty protecting your brand and obtaining any related domains.
– Does the registrant have a trademark? Run a trademark search. If the registrant has a trademark and it covers the domain name, you’re going to struggle.
– Is the registrant using the domain? If they are making legitimate use of it, you will have problems. Generally someone who registered and is using a domain in good faith will not be required to give it up.
Make contact
Writing to the registrant, setting out why you are entitled to their registered domain, is an essential first step. If you have a trademark make reference to it. If you have been trading under the domain name for a number of years, refer to that as well. Even if you only have an email address for the registrant, draft your email in formal terms and refer to your research, outlining why you have a right to the domain name and they do not. If you take matters further you will want to rely on this communication so make sure it is as accurate as possible.
Always offer to reimburse the registrant for any reasonable out of pocket expenses incurred in registering the domain. This means that the registrant can ask for a small amount of money for the domain without running the risk of being seen to be holding the domain to ransom. Equally though, if they do ask for an exorbitant fee, that can be very helpful in showing bad faith later.
Dispute resolution
If you receive no response or the response demands a huge fee for the domain name you may want to take matters further. For most domains (eg .com, .net, .org) you will want to look at raising proceedings under the ICANN Uniform Dispute Resolution Policy. You will need to establish:
– Your rights to the domain: Either a trademark or some established reputation through use.
– Similarity: That the domain is similar or identical to your mark.
– Registrant’s rights: That the registrant has no right or legitimate interest in the domain.
– Registration and use in bad faith: You need to show both.
The chief difficulties lie in establishing registration and use in bad faith. The ICANN policy gives a number of examples, with the main one being that the domain was registered solely with a view to re-selling it to the mark owner.
Proceedings under ICANN are cheaper than court proceedings (generally around £1000 £1500), but, as you can see from the criteria, the policy is generally aimed at cyber-squatting.
Court proceedings
If you don’t meet the ICANN criteria you could consider court action. If you have a trade mark or established reputation, the UK courts are generally supportive of mark owners protecting their brands. However, proceedings can be expensive.
Before you do decide to take this step, you should consider how important the domain is to you and weigh up the cost of court action against the transfer fee being proposed by the registrant.
Be proactive
Recovering a domain once it has been registered is not always straightforward and many firms adopt a proactive strategy of registering domains as soon as they become available. This can lead to difficulties in managing a substantial portfolio of domain names. It also leads to difficult questions regarding where you draw the line.
It would be wise to register the key top-level domains for the brand and then monitor registrations of other similar domains using a domain name watching service. For non-key domains, marketers should consider how damaging the particular registration actually is before recommending that action be taken.
Ultimately, if someone has registered a domain name containing your mark, but is doing nothing with it, how harmful is that to your brand? On the other hand, if the brand is being used in a way that will damage your reputation, then immediate action to stop it may well be appropriate.
For more digital marketing content, visit the IT Marketing: Benchmarking report
