Back in 2019, I posted my: 10 Top Tips for Writing a Domain Dispute Complaint. That still remains pretty relevant. So worth a read if you’re the “Complainant”, i.e., the person who wants to claim the domain name!
Meanwhile, let’s jump over the net. If you’ve received a domain name dispute complaint (i.e., you’re the “Respondent”), you may be at risk of losing your domain. Knowing how to defend yourself is crucial. Here are ten top tips to help you respond effectively and protect your domain name rights.
1. Understand the Basis of the Domain Dispute
Domain disputes involving UK businesses are typically handled through Nominet’s Dispute Resolution Service (DRS) Policy for .uk domain names or ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) if it’s a “gTLD” domain such as .com. Please read the Policy. In my experience as a domain name panellist, many parties don’t! That will give you a broad indication of the legal grounds for the Complaint and the kinds of defences that you can raise. Read the relevant “overview” for additional crucial guidance. See WIPO Overview 3.0 and Nominet’s DRS Expert’s Overview.
2. Don’t Delay
The arbitration provider will give you a deadline to file your Response. In the case of the UDRP, you’re entitled to an automatic four-day extension, so request that immediately. Then get cracking! Don’t leave things to the last minute. The Panellist/Expert may reject your Response if it’s late. If you’re planning to instruct a lawyer, it’s best to give them time to carry out investigations and prepare the Response properly. I won’t tell you how many times respondents have approached me to file a response which is due tomorrow!
3. Assess the Complainant’s Case
Generally speaking, the Complainant must prove:
- They have rights in a name that’s similar to the domain name (e.g., a registered trade mark or established brand identity).
- Your registration/use of the domain is abusive/bad faith. For .uk domains they only have to show abusive registration or For .com domains, they have to show registration and use in bad faith. That distinction may be crucial.
If the Complainant lacks rights and/or there is no evidence to show that you registered/used the domain name to target their business, their case may be weak.
4. Consider Settlement
However, if your domain name was indeed intended to capitalise on someone else’s trade mark, there may be little to gain by fighting. Think about trying to achieve a quick settlement.. Bear in mind that the decision, including your name as respondent, will be posted on the web. Maybe there is scope to resolve the case by transferring the domain name to the complainant, while still reserving your legal rights. However, be careful about offering to sell the domain name to the Complainant for a significant amount. That itself may amount to bad faith, depending the circumstances.
5. Gather Evidence
If you decide to defend the case, collecting the right evidence is crucial. The Panellist/Expert may well disregard any of claims that aren’t backed up by evidence. If applicable, gather evidence showing that you registered and/or used the domain name for a legitimate purpose/business that wasn’t not aimed at the Complainant. Also collect documents that contradict the Complainant’s assertions. For example can you counter a claim that the relevant name is “unique” to the Complainant. Evidence must always be dated. Also, don’t say that information “is available” as the Panellist/Expert probably won’t give you a chance to produce it. If you rely on a document, always attach it to the Response.
6. Respond Clearly and Precisely
When preparing your Response, set out your position clearly and precisely. One good approach is to:
- Summarise the key points of your defence at the start (draft this bit last!).
- Set out the factual background (cross-referring to relevant numbered and dated annexes) demonstrating that you registered/used the domain name legitimately without knowledge of, or at least intending to target, the Complainant.
- Then pick apart the Complainant’s arguments, again referring to supporting documents attached to the Response.
7. Refer to the Domain Policy/Overview/Cases
Refer to the appropriate provisions of the applicable Policy and Overview to show that you understand the issues. Also invoke, previous relevant “persuasive” decisions under that Policy, e.g., appeal decisions (for .uk domains) or other major decisions which have become central to that Policy’s jurisprudence. These will likely be mentioned in the relevant Overview. (See links above.)
8. Get it All Out There!
Please see point 9 of my article 10 Top Tips for Writing a Domain Dispute Complaint. The same applies to respondents. Be wary of trying to conceal unhelpful facts. If the Panellist/Expert finds out (as often happens), that will damage your credibility. And could even be fatal to your case. It looks much better if you got in first by owning up to – and explaining – the problem issue.
9. Take Protective Steps
Consider taking steps to protect your domain name portfolio. For example (if applicable):
- Be wary about using automated parking services that may generate pay-per-click links to relevant brand websites.
- Keep dated communications or other evidence showing your preparations to use the domain name for a legitimate purpose.
10. Consider Appointing a Domain Name Lawyer
Yes we would say that, wouldn’t we! Obviously that’s your call. But experienced domain dispute solicitors can offer the kind of strategic advice and drafting nuance that can make the difference between winning and losing. If you’ve received a domain dispute Complaint, feel free to send it across (include all annexes) and I’ll happily give you my initial thoughts/advice – for free!
Need Legal Help Defending a Domain Name Dispute?
Please contact Adam Taylor now for an initial chat.
