A local company – one of my main competitors – is using a domain name just like mine to send visitors to his website. So my name is example.co.uk – he’s using example.net. What can I do?
Alasdair Taylor's Answer
There are usually two main initial approaches in this situation (in the UK). First, you could contact the competitor, or ask your lawyers to contact the competitor, requesting/demanding he desist. Second, you could file a domain name arbitration claim.
Contacting the competitor
The usual way of contacting the competitor would be by formal letter. The letter would set out your rights in the trade mark represented by the domain, detail the acts of the competitor that have trespassed on your rights, request or demand that the competitor transfers the domain name to you, and outline the unpleasant consequences if the competitor does not comply. If you plan to do this yourself – or for that matter if your lawyers are not trade mark experts – make sure that the letter doesn’t constitute a groundless threat of trade mark infringement under Section 21 of the Trade Marks Act.
One disadvantage of writing in these circumstances is that it may give the competitor the opportunity to pass the domain name to a third party.
If an initial letter is unsuccessful, it may be followed up by court proceedings or by a domain name arbitration claim. If you plan to follow a letter with court proceedings, you should ensure that it complies with relevant pre-action requirements.
Filing arbitration proceedings
Filing domain name arbitration proceedings will block the transfer of the domain name. Arbitrations involving .net domains are governed by the UDRP. They are cheaper, quicker and more straightforward than court proceedings. They can be done on a DIY basis, although professionally represented parties tend to have a much higher success rate.
If you are unsure of the best approach, your lawyer should be able to advise you, taking into account all the circumstances. If you need a referral to a lawyer who could represent you, please let me know.