Author: Tim (Page 1 of 3)

In my previous article, I took a retrospective glance at my old law degree dissertation from the University of Southampton, revisiting pre-UDRP domain name disputes and cases like prince.com and epix.com. I enjoyed writing it (though you may have felt otherwise reading it), but I’m back with a few more tales from the early, often lawless, days of domain name conflicts.

One of the standouts from that era was harrods.com. An enterprising individual, Michael Lawrie, spotted the opportunity and registered the domain through Network Solutions Inc. (NSI) – then the gatekeepers of the .com universe. Unsurprisingly, this drew the attention of Harrods, the eponymous London department store, which already ran a website from harrods.co.uk.

With no UDRP, Harrods had only one option: litigation. The resulting case, Harrods v. Lawrie ([1997] CLSR 303), is one of the earliest domain name disputes to reach the courts. Harrods alleged trade mark infringement, passing off, conspiracy, and reputational damage. Unfortunately for keen law students, Lawrie didn’t appear at the hearing. An injunction was granted, and the domain handed over. A useful reminder of just how slow, costly, and uncertain the process was in the absence of a dispute resolution mechanism.

At the time, my dissertation had to lean heavily on conventional trade mark cases. One example was Glaxo Plc. v. GlaxoWellcome Ltd. ([1996] FSR 360), where someone registered the company name ahead of the merger of Glaxo and Wellcome.

The explanation offered? It was “an interesting combination of words.” Mr Justice Lightman was not convinced, observing that there are “limitations to judicial credulity.” The fact pattern might sound familiar to anyone who deals with speculative domain registrations today.

Across the Atlantic, the US courts were grappling with the same issues. I covered Panavision International L.P. v. Toeppen (945 F. Supp. 1296 (C.D. Cal. 1996)), in which Panavision discovered that Dennis Toeppen had registered panavision.com.

The court concluded that “registration of a trade[mark] as a domain name, without more, is not a commercial use of the trade mark.” However, Toeppen’s broader pattern of registering domains like aircanada.com, camdenyards.com, lufthansa.com, and yankeestadium.com helped the court characterise his activity as commercial – essentially a business model of selling domains to trade mark owners. He even has a Wikipedia page to mark his place in domain name history.

The picture these cases paint is clear: a system with no structure, few rules, and little recourse beyond the courts. Rights holders faced high costs and slow processes, while domain speculation thrived.

Thankfully, things have changed. Today we benefit from robust dispute mechanisms – the UDRP, Nominet’s DRS, and a variety of ccTLD systems – which offer quicker, cheaper, and more consistent outcomes.

At Com Laude, we’re proud to represent some of the world’s leading businesses in navigating domain name challenges, and we continue to help shape the evolution of these systems.

Manchester City Football Club Limited v. Vincent Peeris / Renown SC – WIPO Case No. D2009-0686

While rummaging through the Com Laude domain name dispute vault – a collection now large enough to require its own (very geeky, very niche) librarian – I unearthed a curious case from 2009. This one has all the hallmarks of fiction – except for the inconvenient fact that it actually happened.

We acted for Manchester City Football Club, just after the Sheikh Mansour era had begun and the club’s fortunes were turning as sky blue as its kits. The dispute centred on two domains: <manchestercityfc.com> and <mcfc.com>. The former is pretty self-explanatory. The latter, the Respondent claimed, stood not for Manchester City FC – despite decades of use and the club’s international fan base – but for something altogether more local: the “Mutwal Community Football Club” of Colombo, Sri Lanka.

According to the Respondent, this club was formed in the wake of the 2004 tsunami, with entirely honourable intentions and a catchy acronym. He produced minutes from a 2005 meeting, a local certificate, and even a rudimentary website layout. One document claimed a budget for the website of $36,815 – roughly twice the budget he’d allocated to the entire club. Curiously generous, for an organisation which later claimed it was on the brink of bankruptcy.

More curious still, the domain <manchestercityfc.com> had been bought “to give away for free” in a deal involving <mcfc.com>. The latter had allegedly been purchased for $20,000. The Respondent then emailed our client offering both names for sale for £175,000. When that didn’t elicit a response, the price went up. By March 2009, he was suggesting there were third-party offers in the region of £3 million (of course there were…), and that our client ought to match them. Generous flexibility followed – he’d accept £2 million, if the club moved quickly.

In parallel, the Respondent had parked <mcfc.com> with Sedo, where it displayed links such as “Manchester City Football”, “Top Man City Gifts” and “Man City Stadium Tours”. A sincere tribute to community football outreach.

We pointed out the minor flaw in this story – namely, that there was no trace of the alleged MCFC project anywhere. No press coverage, no online footprint, no evidence of any actual use of the acronym before the domains were acquired. And oddly, in the lengthy business proposals sent to City in 2008 and 2009, the Respondent made no mention of the “Mutwal Community Football Club” at all. Just lots of talk of financial difficulty, and the need to cash in on a valuable domain asset.

The Panel wasn’t convinced. Nor, I suspect, would you be. In a detailed decision, the Panel concluded that the whole set-up bore the hallmarks of a sophisticated cybersquatting operation. The Panel politely acknowledged the social good that might have been done by the local community group, but drew a firm line between that and the conduct of the Respondent, who had acquired the domain names not to support a tsunami recovery football project, but to sell them to our client for a hefty profit.

Both domain names were ordered to be transferred to the Complainant. The club, presumably, was relieved to pay £0 instead of £2 million. And the rest of us were left with another cautionary tale about domain name speculation, fictional football teams, and the dangers of overestimating your leverage against a Premier League brand.

At Com Laude, we’ve spent over two decades helping clients untangle domain name disputes – whether the respondent claims to be a rival business, an anonymous fan, or a tsunami-themed grassroots initiative.

As I continue leafing through my old law dissertation, I’m reminded just how uncharted the domain name world was before the UDRP came along in 1999. It was, quite frankly, the Jurassic period of online dispute resolution. Or perhaps more accurately, the Wild West (though some might argue it still is).

Back then, Network Solutions Inc. (NSI) controlled the .com namespace under contract from the US government. Their policies on trade mark conflicts were famously vague – critics said NSI was “forcing a terribly flawed trade mark policy down the throats of its customers.” In many cases, they simply suspended disputed domains and left the parties to fight it out in court. No one was happy (apart from some lawyers!)

And if you wanted your domain back from that purgatory? You needed a court order from a US court. The perfect system, as long as you had deep pockets and a penchant for transatlantic litigation.

One dispute I highlighted in my dissertation involved the domain prince.net, with the American Prince Sports Group on one side, and UK-based Prince plc on the other. Despite the US company’s trade mark registrations, a UK court sided with Prince plc, recognising their prior use. It helped that the two companies had coexisted peacefully until domain names came into play. But the first-come, first-served nature of registrations tipped the balance.

Another example was epix.com, in which Interstellar Starship Services fended off a challenge from the US trade mark owner Epix Inc. Interstellar, which promoted theatre groups, sought a declaratory judgment of non-infringement – and won. Their proactive approach kept their website online and avoided NSI’s “suspend first, ask questions later” attitude. The case showed just how far trade mark owners were willing to go to acquire domains, and how unpredictable the outcomes could be.

Both cases revealed the chaos and uncertainty of the pre-UDRP era, where there was little structure, inconsistent decisions, and very few ways for a smaller business to defend itself without going to court.

Thankfully, the introduction of the UDRP in 1999 brought much-needed order. It’s not perfect, but it’s consistent, and its impact has been profound. I’ve even had the privilege of contributing to its development, most recently as part of the joint ICA-WIPO submission during the UDRP’s ongoing review.

We’ve come a long way since those lawless early days, and I’m proud that Com Laude is now one of the top-three UDRP filers globally. A bit more efficient than trying to drag NSI into court, I’d say.

In my last article, I unearthed my old law dissertation and reflected on how domain names and trade marks have (and haven’t) evolved over the last thirty years.

It’s been interesting to see how many of my predictions still hold water (and equally sobering to remember I wrote them in a world of dial-up modems and AltaVista). One particular theme that refuses to go away is misleading domains—and the persistent power of first-come, first-served.

Back then, I wrote:

“With domain name registration being essentially unregulated, except through post-registration litigation, users can be misled by similar domain names. This has a negative effect for both the consumer and the provider of the goods or services, as consumers are never sure whether the site they are looking at is a bona fide site or not.”

A fair point, in hindsight.

Although mechanisms like the UDRP and Nominet’s DRS have since been established— and I now get to weigh in on these cases as a DRS Expert —the core issue persists.

The system continues to favour the opportunist. It remains quick and easy to register a misleading domain, yet expensive and time-consuming for brand owners to respond. This imbalance leaves consumers uncertain, undermines trust, and places the cost of protection firmly on the shoulders of the rights holder.

The result is a familiar cycle: confusing domain names, cautious consumers, and brand owners left managing the fallout. The reputational impact may be subtle, but it’s real—and persistent.

This isn’t just a theoretical concern confined to law journals. It’s a daily, practical challenge for organisations trying to protect their online presence. The steady stream of cybersquatting and domain misuse only underlines the need for a focused and well-supported approach to brand protection.

So yes—misleading domains are still with us, and they’ve been causing headaches for three decades now.

It’s been a shocking revelation (to me at least) that almost 30 years have passed since I wrote my dissertation on ‘trade marks and domain names’ as part of my law degree at the University of Southampton.

In a trip down memory lane, I dug out my old dissertation (yes, I still have it in hand-coded HTML!) and thought it would be entertaining to reflect on my predictions and their accuracy (or lack thereof) in the world of domain name disputes and brand protection.

I’ll periodically share some highlights and lowlights from my dissertation, starting with typo registrations.

Back then, I used ‘coke.com’ and ‘c0ke.com’ as examples and predicted that the registration of similar domain names could lead to ‘a number of repercussions’. I said:

For example “http://www.coke.com” (“Coke” is a registered trade mark) and “http://www.c0ke.com” (note the zero instead of the letter “o”) could co-exist as separate domain names without any technical difficulties. Such similar domain names could potentially result in a number of repercussions. Another company, for example the registrar of “www.c0ke.com” could use the power of the “Coke” name for their own advantage.

Fast-forward to today, and a quick glance at our dispute records at Com Laude reveals that we’ve successfully recovered around 175 typo domain names from cybercriminals on behalf of our clients. So, it seems my prediction wasn’t too far off the mark, although ‘a number of repercussions’ may have been something of an understatement!

It’s intriguing to look at my dissertation’s predictions and their relevance decades later and I plan to share more in the coming weeks.

Meanwhile, rest assured that the team at Com Laude remains at the forefront of dispute services, dedicated to staying ahead of the curve in protecting your online brand identity. Get in touch with me to explore how we can safeguard your online ecosystem.

Arm Limited v. Sarbel Bandak [WIPO Case No. D2021-0594]

I’m continuing to delve into Com Laude’s domain name dispute archives, which contain a staggering 2.9 million words in UDRP submissions, to ferret out some of our standout cases.

In the lightning-fast world of domain name speculation, it’s not uncommon for savvy investors to snap up promising domain names before anyone else can blink. But when you go toe-to-toe with a global tech behemoth like Arm, you’d best be sure you’ve done your homework.

That’s exactly what happened in a case where we represented Arm, the world’s leading chip powerhouse, in Arm Limited v. Sarbel Bandak [WIPO Case No. D2021-0594].

At stake was the disputed domain name armcortex.com, a combination so patently linked to the well-known Arm Cortex processor line that even a casual observer could see the connection.

But the Respondent, a seasoned domain name investor, begged to differ.

Claiming innocence, he argued that he had registered the name without any knowledge of Arm’s trademarks. His defence, however, began to unravel when it emerged that he had indeed conducted trademark searches before registering the name, but had chosen to ignore them. Worse, he offered no plausible explanation for his choice of the name other than a convoluted metaphor involving brain cortexes and motor skills, noting:

I registered armcortex.com because it also reminded me motor cortex which is part of cerebral cortex, that controls the movement of the body, the limbs including arms.

The Panel, understandably unconvinced (perhaps even perplexed), didn’t buy it for a second. Nor did they spare any sympathy for the Respondent’s claim that he had a legitimate interest in the domain. With Arm having proven its trademark rights over both “Arm” and “Cortex” and demonstrating that the Respondent had never been authorised to use the name, the Panel found no basis for his defence.

The proverbial nail in the coffin came when our submissions pointed out that the Respondent had offered the domain name for sale for a staggering USD 23,000, a clear sign of bad faith intentions. Though, that said, in pre-dispute correspondence he did offer to reduce his price to USD 18,000. Very decent of him. Add to that his history of registering similar generic-branded names for resale, and the Panel reasonably found both bad faith registration and use.

But the Respondent’s defence didn’t stop there. In a bizarre attempt to justify his actions, he cited biblical references to the terms “arm” and “cortex” and even invoked passages from the Bible:

Also aside from its physical definition, arm is used in Scripture as a symbol of power in action–either divine or human. For your reference you can check : (Isaiah 53:1: “Who has believed our message? To whom has the LORD’S arm [power] been revealed.) and (‘I will bring you out from under the oppression of the Egyptians, and I will free you from slavery in many verses. I will rescue you with my powerful arm and with mighty acts of judgment’ “ (Exod 6:6)

Arguing this as proof that the combination “armcortex” had no trademark significance. The Respondent further observed:

So [the domain name is] a word symbolizing power and a word symbolizing intelligence through action and movement together is a perfect combination for me which does not make any sense for you

The Panel, unimpressed by these tenuous and strained attempts to wriggle out of his predicament, wasted no time in rejecting the Respondent’s arguments.

In the end, Arm walked away with a resounding victory and setting down a warning against future abuses of its intellectual property.

Another salutary lesson for all you cybersquatters out there: be careful what domain name you pick, or you might just get burned. And next time, leave the Bible out of it.

When confronted with challenging domain disputes, you can depend on Com Laude’s seasoned experts with well over 25 years of experience under their belts to advise you through these difficult cases. If you have a thorny domain dispute of your own, don’t hesitate to contact me.

As well as acting for some of the largest corporations in the world, we also work on behalf of talented people who are famous for their creative output. We have acted in disputes relating to film stars, authors, fashion designers and, in this memorable case, a member of a boy band launching his solo career.

As my colleagues are all too aware, I only listen to hypnagogic pop and crunkcore, but even I knew of JLS. As a band, they leapt to fame when they came second to Alexandra Burke in the fifth series of The X Factor, shown on ITV in the United Kingdom.

Made up of talented musicians Aston Merrygold, Oritsé Williams, Marvin Humes, and JB Gill, the band went on to have a string of hits and sold 2.6 million albums and 3.6 million singles in the UK alone.

But back to that X Factor final. On 14th December 2008, as millions tuned in to watch, an individual in London spotted an opportunity. The band, now in the spotlight, had their names in the public eye. This dispute focused on Aston’s .com – astonmerrygold.com – as our respondent, with a gimlet eye focussed on an opportunity, registered each band member’s name as a .com and .co.uk domain within minutes of the final televised result.

This is what I call the “Dragons’ Den”* effect, or the “Shark Tank”** effect for our American colleagues. The moment a business name is revealed on these faux-preneurial shows, a rush of keyboard warriors will race to buy up the corresponding domain names. Perhaps with the aim of selling it to the now well-funded fledgling business.

In this case, our cybersquatting entrepreneur redirected the domain names to his website at “geniefashion.co.uk” where he sold a variety of t-shirts and other rather dubious fashion items. Clearly, his business plan was to use the attractive force of our famous client’s name to drive t-shirt sales on his website.

As is so often the case, the respondent replied to our complaint with shocked incredulity. Mentioning our formal, but polite, pre-dispute correspondence, he noted “…I was initially shocked by [Com Laude’s] emails and demands. It took me completely by surprise as I have never been contacted by anyone in this manner before”.

He protested his innocence, illogically positing that “if rich companies can form businesses and brands and then retrospectively claim a domain name that was purchased legally before they existed as an entity would be unfair”.

Of course, his logic bypassed the fact that he was monetising someone else’s personal name, a name which our client relied upon to make a living and which he had built up considerable fame and goodwill through his talent and hard work!

Having considered both sides of the argument, the panellist clearly agreed with us, noting that the timing of the domain name’s registration was deeply suspicious:

It is clear beyond any doubt from the timing of the registration of the Domain Name, the fact that the Respondent at the same time registered domain names that corresponded to other members of JLS and the fact that Aston Merrygold is of itself a relatively distinctive name, that the Domain Name was registered because of the Complainant’s appearance as part of JLS on the X-Factor television show.

Also, the panellist gave the respondent short shrift for taking advantage and monetising the domain name:

Further the Panel accepts that the reason for doing this was to gain some form of commercial advantage for the Respondent or some other commercial entity with which he was involved. The Complainant contends that this advantage took the form of redirecting Internet users to a website of a company of which the Respondent was a director.

Finally, the panellist didn’t much care for the respondent’s view that it was entirely acceptable to register our client’s name simply because he got there first during that fateful X Factor final:

the Respondent appears to maintain (although this is not entirely clear) that such registration and use was in some way legitimate, because at the time of registration the Complainant had no trade mark rights in his name because he had yet to pursue a solo career and, therefore, these proceedings constitute an attempt to “retrospectively claim a domain name that was purchased legally” prior to the existence of the rights relied upon. … the Panel does not accept this.

The respondent’s feigned innocence didn’t carry much weight in the panellist’s eyes, and the domain name was transferred to our client.

With our diligent efforts, we struck the right chord, ensuring our entrepreneurial respondent had to play by the rules. Our pop star client could now belt out the tunes without worrying about online imposters hijacking his traffic and redirecting fans to dubious t-shirt shops.

If you have a problem with infringing domain names, even if you’re not thinking of starting a solo pop career, then do connect. Now I’m off to listen to my crunkcore collection.

* I’ve always had a problem with the program’s title “Dragons’ Den”, as dragons don’t live in dens. Foxes live in dens, dragons live in lairs. Another example of alliteration riding roughshod over accuracy.

** Sharks don’t live in tanks either

Aston Merrygold v. Martyn O’Brien [WIPO Case No. D2014-1462]

[Photo: Pixabay]