Page 109 - Law and the Media

Law and the Media
4.3.4 Domain names

General principles
Domain names are unique names that identify specific Internet web sites. Because a domain
name is not recognized as an intellectual property right under English law, it is not possible
to bring an action for copyright infringement of a domain name.

However, the English courts have in recent years begun to use the law of trademarks and
passing off in order to provide a remedy for those who have been subject to alleged
infringement of a registered domain name or a recognized company or brand name used as
a domain name. The decision which showed that the English courts will not look kindly on
those who ‘grab’ domain names with the intention of selling them back to the brand owners.
Marks & Spencer and Others v One In A Million Ltd and Others (1997) in that case, the
defendants had registered a long list of domain names including marks&spencer.com,
virgin.org, sainsburys.com, thetimes.co.uk, bt.org and bskyb.net.

Registration
Several web companies offer domain name registration services, as do registries in other
countries that allocate domain names based on geographical location such as .uk and .fr.
However, the so-called ‘top level’ domain names such as .com, .net and .org can only be
registered by registrars accredited by the Internet Corporation for Assigned Names and
Numbers (ICANN), a non-profit organization based in the United States. ICANN works with
the World Intellectual Property Organization (WIPO), a specialized agency of the United
Nations that has taken a leading role in developing global policy and co-ordinates and
administers international treaties relating to intellectual property protection.

Disputes
If a dispute arises in relation to a domain name, proceedings should be issued in the English
courts for infringement of a trademark under the Trademarks Act 1994 and passing off.

If the domain name has been registered by an ICANN accredited registrar, it is also possible
to apply for an adjudication as to whether the domain name should be returned under the
Uniform Administrative Dispute Resolution Policy (UDRP). Under UDRP, disputes over the
entitlement to a registered domain name must first be resolved by court litigation between
the parties claiming rights to the registration. Once the court rules as to who is entitled to the
registration, the ICANN accredited registrar will implement that ruling.

If the dispute arises from a registration that is alleged to have been made abusively, such as
‘cybersquatting’, UDRP provides an expedited administrative procedure that allows the
dispute to be resolved without the cost and delay of litigation by one of ICANN’s approved
dispute resolution service providers. The disputed domain name does not have to be a
registered trademark in order to fall within the remit of UDRP. The author Jeanette Winterson
was recently granted relief against cybersquatting over jeanettewinterson.com in recognition
of her ‘character’ or ‘personality’ rights.
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