Domain Names: As badges of

identity
Giles Gater
Content
• What are domain names?
• How are domain names
obtained?
• What major disputes exist
around domain names?
• Challenges to domain names?
• How are domain names
regulated?
Domain Names
• Domain names are the names for
websites.
• Global navigation tool used to find
webpages (like home addresses).
• Each webpage, which is a page of
information, has its own unique
address
– Uniform Resource Locator or
URL.
Staffordshire University’s URL (Uniform
Resource Locator)

https://www.staffs.ac.uk This is Staffordshire

University’s information
society home address.
https://www.staffs.ac.uk

https:// means the www. means the page ‘Staffs’ suggests that .ac.uk is the unique You could also add
page uses hypertext is on the world wide that the site operator is address for UK ‘course/law-llb’. This
transfer protocol web. Staffordshire academic organisation third layer identifies the
secure. University (Second (Top Level Domain specific pages you are
Level Domain). (TDL)). looking for.
Registration

Private companies
Domain name registry Accredited by the relevant registrar.

Key element – you pick the domain name, unlike

an address.
Domain Name = Trademark?
Pick your own domain

Users expect brands to have related domain names e.g. Amazon.com or Staffs.ac.uk

Carinsurance.com – 2010 sold for $49.7m

Hanger Holdings v Perlake Corporation Domain names, like registered trademarks, are intangible
[2021] EWHC 81 (Ch) personal property.

Where there is value, there are disputes and fraud

How might I commit fraud using a domain
name?
Fraud

Domain names are first Risk of trademark clashes

come, first served
Accidental &
Deliberate
Nominet UK: First Come, First Served Policy
Pitman Training Ltd v Nominet UK [1997] EWHC Ch 367

1996 Pearson Nominet UK had

Pitman Training Ltd Later in 1996, Pitman
registered the mistakenly let both
and Pearson Training registered
pitman.co.uk domain companies register
Professional Ltd the pitman.co.uk
name but did not use the same domain
demerged in 1985. domain name.
it. name.

Pearson applied to High Court upheld

Nominet UK to repeal Nominet agreed on Pitman Training Nominet UK’s first
Pitman Training’s first come, first issued a claim for the come, first served
right to use the served policy. domain. policy and dismissed
domain name. the claim.
Cybersquatting Case Law
UK, British Telecommunications plc v One in a Million Ltd [1999] 1 WLR 903

• Appeal case in which appellants specialised

in registering well-known names and
trademarks without consent. They would
then offer them for sale to the relevant
company.
• Decision: Injunctive relief may be granted
before the harm occurs.
• Defendant need only be equipped with or
intend to equip another with an instrument
of fraud. This was determined depending
upon the circumstances.
• Recently upheld in Media Agency Group Ltd
v Space Media Agency Ltd [2019] EWCA Civ
712
 Phones4u Ltd v Phone4u.co.uk [2006] EWCA
Civ 244
Set out requirements for
‘passing off’ – a key element
of the One in a Million case
Reputation (goodwill)
Misrepresentation
Damage or its likelihood
Damage was further defined The judge found in favour of
as: Phones4u Ltd.
Diverting trade
Injuring a party’s reputation by
association with inferior quality goods
Injury inherent to situations wherein
customers would frequently confuse
one business with another or wrongly
connect them.
Two Challenges to Domain Name Dispute
Resolution Identified in the 90’s
Expensive Litigation

Domain name
disputes Traditional court
becoming very system:
common

Expensive Time consuming

Domain Name System Monopoly
• Network Solutions Inc
• Small private
contractor
• Complete control
of .com .net and .org.
ICANN: International Domain Name Regulator

US Federal Government
decided DNS (Domain
ICANN or Internet
Established 01 October Name System) should be
Corporation for Assigned
1998 privatised to increase
Names and Numbers
competition. ICANN was
the result.

American not-for-profit Board of directors sourced

corporation from around the world
ICANN Action

Register Accreditation System ICANN Uniform Domain Name

Dispute Resolution Policy (UDRP)
Challenged the monopoly Alternative dispute resolution procedure for
domain name disputes
ICANN UDRP Success
• First case 09 December 1999
• Worldwrestlingfederation.com
• Claimant successful on 14
January 2000
• Handled over 100,000 disputes
• Mandatory administrative
procedure for TLDs
administered by ICANN.

https://www.wipo.int/amc/en/domains/decisions/html/1999/d1999-0001.html
Future Expanding Market
Running out of domain names

ICANN allowed applications for new gTLDs

By October 2022, 1,241 new gTLDs

Closed but could re-open post 2024

ICANN Fast Track ADR: URS

URS – Uniform Rapid Fast track for clearest Under 21 days

Suspension system cases compared with 60 days
for UDRP
ICANN UPDR Criticism

Claimants choose Most ‘experts’ are IP No appeal process

‘expert’ who resolves lawyers
their case
Nominet UK Dispute Resolution System
Established in Autumn 2001, it is very similar to the ICANN URDP

Establish two things:

Claimant has a right to the name or the respondent's registration of the
mark related to the domain name domain name is an abusive registration

Warehousing domain names (cybersquatting) is strictly set out as an

abusive registration under the Nominet UK DRS rules if a pattern of
warehousing was established (3 cases) in the last two years.
UK Courts: No Intervention
• Toth v Emirates [2012]
EWHC 517 (Ch)
• Court suggests it has no
grounds to challenge
Nominet UK DRS
decisions. The Nominet
UK DRS is the ADR as
dictated in the contract.
Employability
• IP Law
• Expert adjudicator
• Nominet UK
• Freeths, Fox Williams, Maier Blackburn, Adlex
Solicitors, Myerson Solicitors, DLA Piper,
Bowcock & Pursaill, Tinsdills Solicitors