Book Review: The Law of Domain Names and Cybersquatting

A Practical Guide to the Law of Domain Names and Cybersquatting by Andrew Clemson, Trade Mark Attorney and senior associate at Cleveland Scott York.

There is growing concern around domain names and cyber squatting, as recognised in the 2018 World Intellectual Property Organisation report which demonstrated the increase in the number of cases. This book provides guidance for both complainants and respondents in such matters, focusing on the Uniform Domain Name Dispute Resolution Policy (UDRP) for generic top up levels, the Nominet Dispute Resolution Service for the .uk country code top up level domain and the EURid ADR for the .eu country code top up level domain.

The book is presented in three parts: 1) introduction and background, 2) avoiding disputes and 3) disputes and 10 chapters.

In Part 1, chapter 1 offers a brief introduction to domain names including definitions, a consideration of the importance of domain names as well as domain name dispute mechanisms. Chapter 2 considers the effect of GDPR, in particular the challenge to ascertaining the owner of a domain name.

The second part provides three chapters on avoiding disputes, as Clemson writes it is true in law, and in life, that the best type o dispute is the one that never happened! This part highlights the practical steps that can be taken to protect existing portfolios and when protecting a product or venture for the first time. Chapter 3 covers the standard steps to take, from where to register, conducting searches, trade marks, timing, licensing, to portfolio management. Chapter 4 focuses on new gTLDs and the Trade Mark Clearing House. Chapter 5 address the decision making process of when and how to take action in the event that an objectionable domain name has been registered, this includes pre-action, and factors to consider when deciding to take action.

Kitty Squatter
Image: Jean-Luc JLT

The third part of the book takes the reader through dispute resolution. Chapter 6 provides an overview of the dispute resolution options, including Uniform Domain-Name Dispute-Resolution Policy (UDRR), UK court action, and offers a review of UDRP vs taking court action. Chapter 7 focuses on the UDRP, chapter 8 looks at the Uniform Rapid Suspension System (URS), chapter 9 provides an overview of Nominet DRS - which is the only provider of .uk domain name dispute resolution services. Lastly, chapter 10 provides an overview of EURID ADR. In particular it highlights the differences in the EU Regulation and the ADR rules from the UDRP Policy and Rules.

This book is extremely practical and will serve to assist trade mark attorneys, in-house lawyers and private practice solicitors. It offers practical guidance on how to avoid domain name disputes, and best practice in taking action when disputes arise. It covers complex areas of law but is extremely concise and written in a delightfully readable manner.

Read a free chapter online here.
Available from the publisher: £49.99
Paperback: 978-1-912687-12-1
Also available on Amazon