The University of Oxford has recently won a case against an individual who had registered several website addresses that contained variants of the institution’s name. The university went to court to challenge the current owner, Oxford College for PhD studies, over the ownership of the oxfordcollegeirl.com and oxfordcollegesc.com domain names which were felt to be infringing existing copyright. So what happened and what can your business learn from this?
Why do domain disputes arise?
Domain disputes are almost as old as the World Wide Web itself. Domain name ‘prospectors’ will register website addresses that they think are valuable, before selling them at vastly-inflated prices to any interested parties.
The illegal version of this practice is known as ‘domain squatting’, where an individual (or organisation) will register a website address that matches an existing brand or company name. Legally this action constitutes a form of copyright theft as the squatter is deliberately trying to trade off someone else’s brand.
In the event of a dispute, parties can approach various bodies to challenge ownership – in this case the University of Oxford chose to take their case to the World Intellectual Property Organisation (WIPO).
Something new (but very old)
During a dispute, parties are expected to make representations as to why they believe ownership is theirs. In what is believed to be a first, The University of Oxford presented their 800-year old charter as evidence of trademark ownership and proof that they are the original owners of the title.
But despite coming to the tribunal armed with such impressive evidence, the Oxford College for PhD studies decided not to challenge ownership and failed to appear at the tribunal. Unsurprisingly, the WIPO decided in favour of the University of Oxford and ruled that the contentious domain names be transferred immediately.
What should your business do in the same situation?
Like any business dispute, resolving domain name disputes can be a long and costly process, and not everyone has an 800-year old charter to prove that they owned the rights to a name first. But if a competitor is using your brand name to deceive customers, or to trade off your success, you should pursue your case.
Fortunately the first step in resolving a dispute is free – you simply contact the current owner of the domain name, advising them of your concerns, briefly outlining your trademark ownership and asking that they hand over control of the website address. For added weight you could ask your solicitor to write an official request; faced with a solicitor’s letter many domain squatters will cease and desist immediately.
The other party may ask you to pay for the domain, and although annoying, you may find that the cost is preferable to paying legal fees to pursue a case through the courts.
If a simple request fails, you will need to seek advice from a lawyer specialising in trademark and domain disputes who will be able to instruct you in how to proceed. Though rest assured, they’re unlikely to ask if you have an ancient charter against which you can base your case.
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