Domain takedowns: a virtual sword in the digital age.

Understanding domain takedowns

Domain takedowns can be used when a website is facilitating the sale of counterfeit goods, or where a domain name (or the contents of the website itself) is infringing a business’s trade mark(s) or copyright. Domain takedowns can also be used to tackle problematic websites that have been obtained with the intention of selling the website back at an inflated price, or with the intention to block access to a domain and/or to disrupt a business. Promptly taking down a website can be imperative to a business’s reputation, profits, and customer loyalty.

How to take a domain down

If you wish to takedown a website that uses a general top-level domain extension, such as “.com”, you must file a complaint that follows the Uniform Domain-Name Dispute-Resolution Policy (UDRP). As part of this complaint, you must show that you have rights in respect of a mark that is identical or confusingly similar to the domain name and you must show that the domain is used and registered in bad faith.

Alternatively, if you wish to takedown a website that uses a country-specific domain extension for the UK, such as “.uk” or “.co.uk”, a complaint must be filed at the UK Domain Dispute Resolution Service (DRS) Nominet. Within this complaint you need to show that you have rights in respect of a mark that is identical or confusingly similar to the domain name, and you must show that either: the registration of the domain took unfair advantage of (or was unfairly detrimental to) the complainant’s rights, or the domain has been used in a manner which does so.

To illustrate rights in a mark the complainant must either provide details of their registered trade mark(s), or, they must file evidence of use to show they have unregistered trade mark rights. This is particularly important as a common misconception is that owning a domain name enables you to oppose other domain names. Furthermore, relying upon unregistered trade mark protection can be costly, timely and weaker than relying upon registered protection. It is therefore imperative to ensure that a business has registered trade mark protection for their key trade marks, including their domain name. As part of a complaint the complainant must also suggest a remedy. The remedies available are for the domain to be transferred to the complainant, suspended until it is due for renewal, or cancelled and thus available for purchase by a third party.

Once a complaint is filed the owner of the domain name (the registrant) is then allowed to respond to the complaint. If no response is filed, either the complaint will be successful and the relevant remedy will be actioned, or, the complainant must pay for a decision which confirms whether the complaint was successful. If a response is filed by the other side this will then either be examined by the relevant board and a decision will be issued, or, if done via Nominet, a mediation process will occur, following which a decision is issued if necessary. Once a decision has been issued this can be appealed by either party, however, doing so is costly and thus infrequent. Domain takedowns are generally very quick and usually take between 4 - 12 weeks. However, whilst seemingly simple, for a domain takedown to be successful a long list of criteria must be met, and if such criteria are not met, the takedown shall be unsuccessful. This is important as a complainant can only have one chance to file a domain takedown, and it is therefore imperative that any domain takedown filed is complete and precise.

Protecting your domains

There are a few steps that can be taken to protect your business’s domains. The first is to ensure that you register a selection of domains. For example, if your domain was “businessexclsuive.com”, it is beneficial to protect further domain extensions such as “.co.uk” and “.net”. It can also be beneficial to register common misspellings of your domain, such as “businesexclsuive.com”. The second step is to ensure that you have automatic renewals set up for your domains so they cannot be ‘stolen’ by any third parties. The final step is to ensure that your intellectual property portfolio is strong and up-to-date as this can help in swift and effective domain takedowns.

Summary

Domain takedowns are a powerful weapon for protecting intellectual property rights online. However, such actions are complex and are most likely to be effective for (and thus strongly utilised by) businesses that have a complete intellectual property portfolio. We therefore strongly urge that businesses seek to obtain registered protection for their trade marks so that, if they need to wield such a sword, the manner with which it can be swung is precise and fast, resulting in an effective blow. If you have any further questions regarding how to protect your domain names, or how to action a domain dispute, we recommend that our advice is sought as soon as possible.