What if I find a non-UK domain name using my trade mark?

Domain name disputes have become increasingly common in the digital age, where a domain name can be a valuable asset for businesses and individuals alike. These disputes often arise when one party believes that another party has registered a domain name that infringes on their trade mark or brand. To address these issues, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999.

The UDRP provides a streamlined and cost-effective alternative to traditional court litigation for resolving domain name disputes. It applies to all generic Top Level Domain (gTLD) names, such as .com.net, and .org.

To succeed in a UDRP case, a complainant must prove three key elements:

1. first, that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
2. second, that the respondent has no rights or legitimate interests in respect of the domain name;
3. third, that the domain name has been registered and is being used in bad faith.

Bad faith registration and use can be demonstrated through various ways. For instance, if the respondent registered the domain name primarily for the purpose of selling it to the complainant or a competitor for a profit, this could be considered bad faith. Other examples include registering the domain name to prevent the trade mark owner from using it, disrupting the business of a competitor, or attracting internet users to the respondent’s website by creating confusion with the complainant’s mark.

The UDRP process involves several stages, starting with the filing of a complaint by the complainant with an ICANN-accredited UDRP provider, such as the World Intellectual Property Organisation (WIPO). The respondent then has the opportunity to file a response. A panel of one or three experts is appointed to review the case and issue a decision, which is typically delivered within 30 to 60 days from the filing of the complaint. If the panel upholds the complaint, the domain name can be transferred to the complainant or cancelled, depending on the remedy sought.