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Cyber-squatting and what you can do about it

11 May 2009

Imagine waking up tomorrow and finding that someone else is impersonating your company, causing confusion to your customers and even diverting business away from you. What would you do about it'  Identity fraud is one of our fastest growing crimes, now estimated by the Home Office to cost the UK over £1.7bn a year and affecting many businesses, not just private individuals.  One of the easiest ways for unauthorised persons to lay claim to your company’s identity is by registering your web or domain name on the internet but, with a little careful research, it is possible to get it back…

In this electronic age your domain name is as important as the sign above your company’s front door.  Unfortunately, when the internet exploded in popularity, simplicity and ease of use were the guiding principles, not security and protection. So if Joe Bloggs wanted to register the domain name www.companyx.com, he just had to log on to the company issuing the .com names and ask for it.  Compounding the situation is the fact that the organisation responsible for issuing .com names is completely separate from the one issuing .co.uk ones.

This “land grab” scenario has led to concept of Cyber Squatting where an individual or a company can register a domain name in the hope of either selling it to the “true” owner or using it to confuse potential clients.

Here I have to hold my hand up, I’ve been responsible for hijacking domains in the past and have come to the conclusion that it’s morally wrong, it’s like stealing someone else’s work and the effort they have put into building the brand. And just like a reformed smoker it gets my back up to see others still using this technique.

When we type into our internet browser www.companyx.com we expect the web page that comes up to come from Company X.   Not so, if someone else has registered that web address.  Moreover, if we send an email to quotation@companyx.com we expect Company X to get that email.  If this is not the case then the owner of the domain could be viewed as attempting to deceive, regardless of how transparent the deception is.

If this has happened to you, what can you do about it? Well in the UK there are no specific cyber squatting laws to protect you, however the 1994 trade marks act1 and other fraud laws covering “passing off” have been used with some success (it’s worth noting that a trade mark doesn’t have to be registered to be considered a trade mark).   Using the court system can offer the opportunity to gain punitive damages on this basis, but things may not be that clear cut.

To have a case, a domain name has to be seen to be infringing on your trademark, and/or registered in bad faith against you – perhaps by using your name to sell products similar to your own.  Don’t forget, that there are over 40 different categories of trademark, and if the owner of ‘your’ domain name trades under a different category, then they may have as much right as you, under trademark law, to that domain.  Another problem comes when your business name consists of generic terms, e.g. Dental Floss Ltd.  In this case the argument that you have a predetermined right to that domain name falls down as anyone is entitled to sell dental floss!  The rules are pretty clear, though, and there is now a substantial body of cases on file for reference2.

It’s also worth noting that Nominet, the agency responsible for the .co.uk domain suffixes, has its own efficient and commendable service called the DRS (domain resolution service)3 that offers a first stage mediation and decision process to sort out 99% of complaints for much less than court or solicitors would cost, and the people involved are usually well informed. 

If your domain has been Hijacked, here is my suggested action plan:

1. Obtain the address of the company holding the domain by either visiting the web site it is pointing to or by looking up the owner’s information from here http://www.networksolutions.com/whois/index.jhtml

2. Write to them stating that you believe the registration of the domain name is an act of passing off your company’s goodwill and trade marks. In the letter you could threaten to take legal action and cite section 21 of the Trade Marks Act 1994 as has been used in previous cases4

3. Should they not respond to this then you will need to either get a solicitor to initiate proceeding or fill in the dispute resolution form on the Nominet site3 assuming that the name ends with .uk. or for .com domains check out the ICANN website5

 

1 http://www.patent.gov.uk/tm/legal/tmlaw.htm

2 http://www.nominet.org.uk/disputes/drs/decisions/

3 http://www.nominet.org.uk/disputes/

4 http://www.nominet.org.uk

5 http://www.icann.org/ombudsman/contact.htm

 
Gordon Philip,
IT Manager

PHS Teacrate

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