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). Recently, an academy trust responsible for 26 primary schools brought a successful DRS complaint in respect of a domain name held by an IT contractor it had worked with.
The domain name had been registered in March 2020 and pointed to the academy trust's website. It had originally been purchased by the academy trust's marketing advisors before being transferred to the IT contractor, which supported the academy trust and some of its schools. The academy trust said that the relationship had broken down and the IT contractor had stopped engaging with it, ignoring its requests to transfer the domain name. It contended that the domain name should be transferred to it. The IT contractor claimed that the issues were rooted in non-payment for services and a lack of communication and transparency from the academy trust.
To succeed in its complaint, the academy trust needed to show that it had rights in respect of a name or mark identical or similar to the domain name. It was clear that the academy trust had been using its abbreviated name since rebranding in 2020. It would have been known by that name to a significant body of people using its website, including pupils, parents, teachers and other staff, and the applicable regulators and administrators. Its abbreviated name was basically identical to the domain name. The expert therefore concluded that it had the necessary rights.
The academy trust also needed to show that the domain name was an abusive registration in the hands of the IT contractor. The expert found that it was unfair for the IT contractor to attempt to use the domain name as a lever in negotiations surrounding the breakdown of its professional relationship with the academy trust. The expert was satisfied that the domain name, in the IT contractor's hands, was being used in a manner that was unfairly detrimental to the academy trust's rights, and therefore fell within the definition of abusive registration.