Scottish artist Jack Vettriano successfully recovered the domain name, www.jack-vettriano.co.uk, which had been registered by a third party in China and used to sell fakes of his works.
The Lying Game
With a number of global, sell-out exhibitions and a career spanning decades, Jack Vettriano has built up significant goodwill in his name and brand. His large portfolio of work is enjoyed by many and has attracted sales of hundreds of thousands at auctions over the years.
It was understandably of concern to Mr Vettriano to discover that a third party had registered the domain name – www.jack-vettriano.co.uk (the “Domain Name”). This was, not only, easily confused with Mr Vettriano’s own site at www.jackvettriano.com but also infringed his intellectual property rights, being used to sell fake prints of his work.
He sought recovery of the domain utilising the Nominet Complaint Process.
Nominet oversees .uk domain name registrations and offers a Dispute Resolution Service to intellectual property rights holders who have had their rights infringed by a third party’s registration.
To be successful in any complaint it has to be shown that:
- the rights holder making the complaint (the “Complainant”) has rights in respect of a name which is identical or similar to the domain name; and
- the domain name, in the hands of the registering party, is an abusive registration – which is one which takes unfair advantage of or is unfairly detrimental to the Complainant’s rights.
With assistance from his solicitors, Mr Vettriano constructed a successful complaint, meeting both these criteria.
Whilst the published Nominet decision does not detail what arguments were put forward in Mr Vettriano’s case, it could easily be demonstrated that Mr Vettriano has rights in the name “Jack Vettriano” due to his successful career and established goodwill. Furthermore, it seems clear that the Domain Name registration was abusive. The registration took unfair advantage of and was unfairly detrimental to the goodwill and reputation acquired in the Jack Vettriano brand, being used in a way likely to confuse customers into believing that the website was that of Mr Vettriano’s or connected to him. The Domain Name not only infringed the copyright in Mr Vettriano’s works but tried to pass off fakes as his legitimate artwork, taking potential consumers away from his own site.
Constructing a complaint may seem straightforward in scenarios such as Mr Vettriano’s but the Nominet process aims to test the rights of the Complainant to ensure that complaints are legitimate. A Complainant must therefore clearly demonstrate what rights they assert in the name being used. This can be a much harder feat where there are no registered rights or if the business has not been trading for long. Additionally, with the introduction of GDPR, details of the registering party are no longer so readily available. This makes it more difficult to source who is behind the infringing domain, in order to evidence that the registration should be considered abusive.
With the internet being most people’s first port of call when it comes to engaging with brands, it is often necessary to act quickly with domain name disputes to prevent continuing fraudulent activity and/or damage to a brand. This is where we can assist, to help get it right first time, satisfying the requirements and putting the strongest argument forward to succeed in a complaint.
A successful Nominet complaint, such as Mr Vettriano’s, can result in a transfer of the domain name to the rights holder or a cancellation or suspension of the domain name.
Back Where You Belong
With the ease and relative low cost of registering a domain name, brand owners are increasingly finding infringing domain name registrations cropping up, hoping to cash in on the brand’s success.
Whether registered to be offered for sale to the brand owner at ‘ransom’ prices; to block the brand owner from registering the name; or, as was the case here, to create confusion with the public in order to sell infringing goods, such registrations can cause considerable disruption to a brand’s business and divert crucial traffic away from their legitimate sites. A proactive registration strategy can assist, but where an infringing domain has been registered, the Nominet Dispute Resolution Service offers a quick and effective way to take control of the domain.
If you have any concerns around a domain name registration which is similar to your brand and/or questions about domain name recovery, whether it is .com or .uk, please contact me or a member of our team.
On June 17, 2019