If a UK domain name held by someone else is similar to your own name or trading style, you can seek to have it transferred to you by making a complaint to Nominet UK through its Dispute Resolution Service (DRS). To succeed in a DRS complaint, however, it is necessary to show that your business has rights in respect of a name or mark which is identical or similar to the domain name and that the domain name is an abusive registration in the hands of the owner. Recently, a business providing wellness, meditation and holistic services that applied for the transfer of a domain name to it from a community interest company (CIC) failed to clear the second of those hurdles.
The business and the CIC, which had both been incorporated in 2017, shared the same name. The business said that its rights in the name significantly predated the CIC’s registration and use of the domain name. It argued that the fact that the CIC had recently rebranded showed that it had no legitimate interest in the name.
Nominet’s independent expert found that the business had demonstrated that it owned three UK trade marks incorporating the name. The domain name incorporated the name in its entirety and was therefore identical to a mark in which the business had rights.
However, the registration of the trade marks and the business’s own domain name post-dated the registration of the disputed domain name, which had occurred in 2015. The business had not demonstrated that its rights in the name had come into existence before the domain name was registered. The CIC therefore would not have had either actual or constructive knowledge of the business’s rights when it registered the domain name.
The fact that the CIC had chosen to rebrand did not represent an admission of the existence of customer confusion. The CIC had provided plausible explanations as to why it had chosen to rebrand its business. The expert accepted that the CIC had traded under one or more names that incorporated the name for some time, and therefore had a reasonable justification for having registered the domain name. The business had failed to show that the domain name was an abusive registration in the hands of the CIC.