A taxpayer has successfully argued before the First-tier Tribunal (FTT) that a company's...
A recent decision by Nominet UK highlights the evidential hurdles businesses must overcome when seeking to recover a domain name through the Dispute Resolution Service (DRS). A wellness, meditation and holistic services company has failed in its attempt to secure the transfer of a domain name from a community interest company (CIC), despite both organisations sharing the same name.
The claimant business argued that the domain name, registered in 2015, mirrored its trading name and that the CIC had no legitimate interest in retaining it. While the business owned several UK trade marks incorporating the name, these were all registered after the domain had been acquired by the CIC. Its own domain name registration also post-dated the CIC’s 2015 registration.
Trade Mark Rights Were Not Enough
Nominet’s independent expert accepted that the business held rights in three UK trade marks and that the disputed domain name was identical to those marks. However, to succeed in a DRS complaint, an applicant must show that the domain name is an abusive registration. This typically requires demonstrating that:
- the applicant had relevant rights at the time the domain name was registered; and
- the current registrant registered or used the domain name in a manner that took unfair advantage of those rights.
In this case, the business was unable to show that any of its rights existed at the time the CIC registered the domain name in 2015. As a result, the CIC could not have had actual or constructive knowledge of the business’s later-acquired rights.
Rebranding Did Not Amount to Bad Faith
The claimant suggested that the CIC’s recent rebrand was evidence of confusion or an acceptance that it should not have used the name. The expert disagreed, noting that the CIC had provided credible reasons for its rebrand and had actively traded under names incorporating the disputed name for several years. That trading history gave the CIC a legitimate justification for its original registration of the domain name.
As the business failed to demonstrate that the domain name was an abusive registration, the complaint was rejected, and the domain name remained with the CIC.
SEO-Friendly Q&A
What is Nominet’s Dispute Resolution Service (DRS)?
Nominet UK operates the DRS to help resolve disputes over .uk domain names without needing to go to court. It provides a quicker and more cost-effective way to challenge domain registrations believed to infringe trade marks or business names.
What must a business prove to recover a UK domain name?
To succeed, a complainant must show that:
- It has rights in a name or mark identical or similar to the disputed domain name; and
- The domain name is an abusive registration in the hands of the current owner.
Can I claim a domain name registered before my trade mark existed?
It is usually very difficult. If the domain name was registered before your trade mark or business name rights arose, it is unlikely you will be able to prove abusive registration unless there is clear evidence of bad faith.
Does rebranding show that a business admits wrongdoing?
Not necessarily. A rebrand may be for commercial, strategic or reputational reasons. As shown in this case, it does not amount to proof of confusion or an admission of improper registration.