A Domain Name Dispute With a Business Using Your Name

Your name at someone else's address

A customer mentions that they went to your website and ended up at a competitor. You type your business name followed by .com, and there it is: your name, their site.

Or email that customers send to an address at that domain goes to whoever owns it.

There are formal processes for exactly this, and simpler routes worth trying first.

This post describes how those processes generally work; it is not legal advice. Anyone facing a real dispute should talk to a lawyer who handles trademarks and domains.

How it usually happens

• A competitor registers your name and points it at its own site.
• A former partner or supplier registered it while working with you.
• A business elsewhere with the same name got there first.
• A speculator holds it in the hope of selling it.
• A variant, your name plus a town or a trade.

The third is the one to identify early, because it is not really a dispute. A business honestly using its own name has as much right to a domain as you, and neither process exists to take it away.

Collect the evidence first

Before contacting anyone, record what the domain shows today: dated screenshots, and where it sends visitors if it redirects.

Look up its registration. For .com and similar domains the public record usually shows when it was registered and often by whom. For .ca, an individual's details are hidden from public lookups.

Then gather your own history with the name: when you started using it, signs, invoices, advertising, your business registration and any trademark registration. Keep messages from confused customers too.

The simpler routes

Start with a polite, factual letter or email to the registrant. Explain your use of the name, ask for the domain to be transferred, and offer to cover what they paid to register it.

Where a .ca registrant's details are hidden, the registry provides a form for sending them a message without revealing their address.

If that brings no answer, a letter from a lawyer setting out how the facts fit the dispute policy often settles it. Many registrants who would ignore a request do not want to answer a formal complaint.

Generic domains: the uniform policy

Disputes over .com, .net, .org and the newer generic endings go through a policy every accredited registrar must follow, usually called the UDRP.

In general terms, a complainant has to show three things.

The domain is identical or confusingly similar to a mark in which they have rights. The registrant has no rights or legitimate interest in it. And it was registered and is being used in bad faith.

A panel from an approved provider decides on written submissions, far faster than a court case. The only outcomes are transfer or cancellation of the domain; no damages are awarded.

The .ca policy

For .ca domains, CIRA, the registry, has its own dispute policy, and a complainant generally has to meet the same Canadian presence requirements as any .ca registrant.

Broadly, they must show that the domain is confusingly similar to a mark in which they had rights before it was registered and still have, and that it was registered in bad faith as the policy defines it.

They must also offer some evidence that the registrant has no legitimate interest. The outcomes are again transfer or cancellation, decided by a panel on written submissions.

What bad faith generally means

Both policies describe familiar patterns. One is registering a domain mainly to sell it to the owner of the name, or to a competitor, for more than it cost.

Another is registering it to block the owner, as part of a habit of doing so. A third is registering it mainly to disrupt a competitor's business.

A fourth is using it to draw the name owner's customers to the registrant's own site for gain, by creating confusion.

A competitor pointing your name at its own site is the textbook case. A business using its own similar name for its own trade usually is not.

A worked example

A skylight installer with two crews has traded under the same coined name for twenty years, using the .ca version for its website and email.

Last spring a homeowner mentioned that the installer's website had sent her to a roofing contractor for a quote. The .com version of the installer's name, registered that winter, pointed at the roofer's own skylight page.

The roofer had subcontracted skylight work to the installer for years, and the two had parted on poor terms.

The installer took dated screenshots, noted the registration date, and gathered twenty years of invoices, van lettering and advertising. Because the name was coined rather than descriptive, it could only point to one business.

A polite email offering to pay the registration cost brought no reply. A lawyer's letter setting out how the facts matched each test in the policy did, and the domain was handed over within a month.

It now redirects to the installer's .ca site, and the installer has since applied to register its name as a trademark.

When a complaint is worth it

A formal complaint makes sense when the domain is costing you customers or mail, the evidence of bad faith is clear, your name is distinctive, and the simpler routes have failed.

It costs a provider's fee and usually a lawyer's time, to be weighed against what the domain is really costing you.

A descriptive name, such as a town followed by a trade, is hard to claim as yours alone. And an unused domain may do little harm, whatever the motive.

The counter-case

Many apparent disputes are not disputes. A business elsewhere with the same name, a dictionary word, or a domain registered before you began trading will rarely be taken away under either policy.

There, a friendly arrangement, such as a line on each site pointing to the other, or simply promoting your own address on vans, signs and cards, is the better investment.

Where someone has deliberately taken your name to catch your customers, though, collect the evidence, ask first, and use the formal process if asking fails.

Before you send anything

1. Screenshot the domain with today's date.
2. Note its registration date and registrant.
3. Gather proof of your years using the name.
4. Check whether they have a claim of their own.
5. Send a polite written request first.
6. Take legal advice before filing a complaint.
7. Plan the handover if they agree.

Step four saves the most money. A complaint against a business with its own honest claim to the name will fail, and finding that out before filing costs nothing.

Timing a handover so the domain is not locked when you need it moved is covered in a new rule for changing a domain's owner.

Frequently asked questions

West Coast Media Solutions Inc. provides web design, web development, hosting, digital marketing, and business consulting to organisations across Canada, drawing on more than twenty-five years in the field.