We are currently reviewing the set of domains we own. Some permutations of our brand names are owned by other people and we would like to get them back.

I am reluctant to get into legal proceedings as I remember the cybersquatting wrangles of the late nineties all too well. (I used to work for eToys, and the high profile eToys.com v eToy.com court battle was terrible PR for the company and ultimately pointless.)

Does anybody have experience of using a domain name broker to arbitrate and negotiate? Or should we approach domain name owners directly in the first instance?

I am also looking at WIPO Domain Name Dispute Resolution, but that would be a step further down the line, and they do not cover co.uk. http://arbiter.wipo.int/domains/resources/index.html

Obi

We had a similar issue with one of our .co.uk domains.  

Our approach was to have our in-house legal department send a letter, asking if the owner would like to relinquish the domain.  The owner named a price, which we tried to negotiate down.  In our case, the current owner has the same right to the name as we do (i.e. our company name, but their personal name), so we were never going to get it back without their co-operation.

Some country registrars do protect domain copyright.  We had to provide legal documentation in order to register many country level domains.  But, if the ccTLD has this requirement, and the other owner was still able to register the domain, then they are also legally entitled to it.  If the ccTLD doesn’t protect copyright, then the domains are given out on a "first come, first serve" basis.  In this case (like co.uk), you either need to negotiate with the owner, or take the dispute to court. 

In the end, you will need to decide whether the domain is worth the money and the effort it could take to get it.   Here are my suggestions:

• Look up the WhoIS info to see who owns the site and when it expires. You can easily ask your registrar to try to get the domain when it expires
• If the expiry is too far off, then approach the current owners and ask for it
• If the owner has a right to that domain name and they do not want to relinquish it, or want a lot of money for it, you might not have a legal case
• If the other owner doesn’t appear to have a right to the name, and they ask for a very high price to relinquish it, you may have a legal case against them under the anti-cybersquatting precedent

Best of luck!

Eva Appelbaum, Mercer

I would particularly endorse this practical bit of advice.

In relation to other practical advice I would recommend submitting trademark registrations in for the names that are the subject of your domain names (i.e. don't register the end of the domain name - see the following guidance from the Patent Office http://www.patent.gov.uk/tm/reference/workman/chapt6/sec28.pdf ).  These trademark registrations, once granted will help you in a number of ways to get the domain names either as part of the dispute resolution process (if they are .uk domains check out section 2.a.ii of the Nominet dispute resolution policy http://www.nominet.org.uk/DisputeResolution/DrsPolicy/DrsPolicy.html and if they are .com's check out the bad faith provisions in section 4.b of http://www.icann.org/udrp/udrp-policy-24oct99.htm) or as part of a trademark infringement claim, particularly if you already use those names in your business.

Many commentators have suggested that the dispute resolution processes are bias in favour of large businesses and it is certainly true that many businesses have been successful in protecting their valuable brand without the degree of effort involved in the eToys cases.  It is important that you try to make an assessment of who owns the domain names that you would like to buy.  I don't know if Apple made such an assessment but it appears that they have a greater fight on their hands than they expected over itunes.co.uk: http://business.timesonline.co.uk/article/0,,9075-1392761,00.html

Finally, don't forget about getting your registrations in for the .eu domain name - there is a sunrise period, which gives advantage to holders of existing rights (particularly holders of registered trademarks), which you should take advantage of:  See http://www.eurid.org/en/home.php?n=102

Kind regards, Ashley

(Disclaimer: I am a lawyer, but the above is not legal advice and you may not rely upon it or republish it without my express consent.)

On 14:46:38 14 March 2005 Neil-Boatshed wrote:

I would suggest you enter into negotiations via a third party, prices seem to have a nasty habit of going up if the vendor has an idea of your identity in brand or market place terms.

Just as a further footnote - there has been a development in the examples of large brand holders flexing their corporate muscles over inidividual domain names holders.  Please see the following link regarding the tussle over iTunes.co.uk.

http://www.theregister.co.uk/2005/06/17/itunes_nominet/

Cheers, Ashley

(Disclaimer: I am a lawyer, but the above is not legal advice and you may not rely upon it or republish it without my express consent.)