Domain Name Piracy and Disputes – A Solution
The Issue
It is not unusual for a company to conduct its business under a particular tradename, but find itself unable to purchase this as a domain name, in the register of its choice (e.g. .com or .co.il, etc.), because the domain has already been snapped up by someone else.
If you happen to have chosen a name which is already being used in commerce by another business, then the solution may be to simply register your name under a different TLD, such as .biz instead of .com, or suchlike. As long as your use of the name does not infringe someone else's proprietary rights, that might do the job for you.
But, what happens when the domain you are after has been registered to someone who doesn’t use it at all, or maybe only puts it up for sale? Perhaps the domain is owned anonymously, maybe even by a competitor whose only objective is to prevent you from running your business under its "natural" URL.
In the case of TLD's (Top Level Domains), like .com, it is quite common to find hat the owner's details do not appear on any whois search, because they have been masked at the owner's request.
This is a well-known and not uncommon scenario. It can be highly annoying, but there may just be a solution.
The Challenge
Often, when an issue arises between your business and another business, a good first step can be to open a direct line of communication and try to resolve things amicably.
But, in the circumstances described in the previous column, there is often "no-one to talk to". When you look up the domain via a whois search engine, all you find is the name of the company (e.g. GoDaddy) that registered the domain on behalf of the true owner. The details of the true owner may be masked, so you have no way of contacting them directly.
Another alternative, in cases of commercial disputes, might be to file a claim in court. But, in our scenario, we are again faced with a problem: if we do not know who actually owns the domain, or where they come from, how do we know whom to sue, or where to sue them?
If it's a domain outside Israel, do we need to file a lawsuit against the registrar of the domain, just to compel them to disclose the details of the domain's owner?
These are complex proceedings with unclear outcomes, and they can be extremely costly.
In many cases, a business might simply "give up", when faced with these challenges.
The Solution
The good news, however, is that there may just be a solution which is easier, faster and cheaper than you might have imagined.
When registering a domain, in almost all cases, including in Israel and USA, you must, as part of the registration process, agree to be bound by the registrar's dispute resolution policy. In this way, it is simply not possible to register the domain, without becoming subject to the jurisdiction of that dispute resolution policy.
What that means is, that the people who have "grabbed" your domain, and who are not making good faith commercial use of it, are also subject to this same dispute resolution policy.
Under such policies, we can submit a complaint and demand that the domain be transferred to you. We are not hampered by the fact that the domain owner's details are masked – these details are known to the registrar, so the tribunal that hears the complaint has no difficulty communicating with them.
Of course, specific details vary from one country and one register to the next, but, as a general rule, if we succeed in proving that you own rights in the name – e.g. by virtue of the fact that you have registered one or more trademarks – and if we prove that the other side has no legitimate rights to the name and has registered it in bad faith, then the chances of success should be good.
And if the tribunal does rule in your favor, then it could transfer the domain to your ownership, without you needing to pay any kind of compensation to the current owners.
Procedure
And there's more good news. The procedure in such a complaint is nothing at all like the lengthy and patience-testing process of a court case.
There are no affidavits, no preliminary hearings, no trial, no cross-examination, and no delays of years on end, waiting for a ruling, and then for an exhaustive appeal process.
Instead, we prepare for you, and submit, detailed legal argument, in order to support and substantiate your claim to rights in the name, and the bad faith of the other party, and we annex evidence to support our arguments.
In many places, including Israel and USA, the process is conducted in English, before a tribunal comprising an expert in the field, who is very familiar with all relevant considerations.
The complaint is then quickly conveyed to the domain owners and they receive a short time within which to submit a response. In many cases, they do not respond at all.
Either way, very soon after the deadline for the other side to respond, the tribunal issues its detailed ruling.
Timeframe
The entire process, from the time you first contact us until the tribunal issues a ruling, can be as little as 3-5 months (depending on the country and the tribunal).
When compared to court proceedings, this is an extremely speedy outcome.
In many cases, companies decide to initiate such proceedings after "suffering" for many years, not being able to host their website at its natural URL, and then, suddenly, within a matter of weeks, the whole nightmare can be behind them.
Of course, the conditions for a successful complaint are not always met, and a positive outcome can never be guaranteed, but the fact that such a troublesome matter might find positive resolution in so short a time is, in and of itself, very encouraging.
Costs
When we compare the costs of this kind of complaint to, say, full-blown court proceedings, anywhere, and particularly where such proceedings are held abroad, we find them to be negligible, relatively speaking.
Also, when performing a cost-benefit analysis, in circumstances where it might be possible to finally host a website at its "natural" URL, many companies conclude that this proceeding is extremely worthwhile, both from an economic and also from a commercial perspective.
Of course, it cannot be ignored that this kind of complaint demands specialized skills and know-how, as well as the preparation of a document, in English, which sets out clear and convincing argument and evidence. So, costs are not insubstantial, but, when calculating the benefit that might ensue from the action, and the costs of the alternatives, they are nevertheless often considered relatively quite low.
