We were recently approached by a set of chambers – let’s call them Harwood Chambers – that had discovered that its name and contact details were being used in connection with a bogus website. The website was located at a domain name that incorporated the name “harwoodchambers”. It purported to be the online face of a legitimate legal practice: it listed the details of supposed legal practitioners of the “Harwood Law Firm” and claimed that the firm was part of an established UK law group regulated by the Solicitors Regulation Authority. The physical address details and telephone numbers of Harwood Chambers were provided on the site’s contact page.
The website was actually being used in relation to an immigration scam. Individuals living abroad would receive an e-mail advising them that they had been offered employment with a leading UK-based company. The job offer was contingent on a successful visa application, purportedly to be processed by “Harwood Chambers”. Payment and personal details from the targeted individual were required for the application.
In order to limit the damage that can be caused by uninvited and unauthorised association with fraudulent websites, we suggest taking the following practical steps.
(1) Avoid confusion
Reduce the likelihood of confusion between the legitimate legal practice and the fraudulent site. As a first step place an appropriate notice on the legitimate site and also consider issuing a press release (although always ensure the press release deals only with facts that are true).
(2) Alert the authorities
Our experience is that, whilst it may be prudent to alert the police, the Bar Standards Board or other relevant authorities, this is unlikely to result in any immediate result. This is not to say that the police do not acknowledge the importance of tackling online fraud. The difficulty for parties (such as Harwood Chambers) is that they are not the primary victims of the crime. The intended victim is the individual (based outside the UK) from whom payment and personal details are sought.
(3) Legal action
Instigating legal action for passing off against the owner of the domain name may be appropriate in certain circumstances. To succeed in a typical claim for passing off, the claimant must show there is a danger that the recipients of the misrepresentation will be confused into using the services of the offending company in mistake for the true owner of the goodwill. The nature of passing off in a case such as the Harwood Chambers case is more esoteric than in a typical passing off claim and therefore any associated claim is unlikely to be straightforward.
Operators of online scams are increasingly sophisticated in protecting themselves from detection, and may use foreign domain name registries and ISPs, or domain name proxy companies to act as a shield. Where the operators are based abroad, jurisdictional issues will also arise. A favourable judgment will be a pyrrhic victory if it cannot then be enforced in the relevant territory.
The expense and duration of legal proceedings are further disadvantages to the legal action route. Whilst there may be good reasons to pursue legal action in certain cases, other courses of action may ultimately be more effective and proportionate.
Approaching the registrar of the domain name in question may be an effective means of curtailing the operation of the fraudulent website. This was so in the Harwood Chambers case where the domain name was suspended following the submission of evidence of the illegal activity to the registrar in question. The effectiveness of this route will depend upon the registrar in each case, although there is reason to believe that registrars are increasingly willing to take action.
ICANN (the Internet Corporation for Assigned Names and Numbers) manages both domain names and domain name disputes in accordance with policies established by it. ICANN delegates responsibility for the registration of domain names to accredited registrars. Each registrar has its own policies and procedures for registering, maintaining and handling domain names.
The type of domain name of which complaint is made will broadly dictate the correct registrar to approach, or indeed, the relevant dispute resolution procedure to be followed (see below). There are two types of domain names:
(i) Generic Top Level Domains (gTLDs), such as .com, .org and .net; and
(ii) Country Code Top Level Domains (ccTLDs), such as .uk and .fr.
In January 2010 Nominet (the internet registry for .uk domain names) announced a new “investigations lock”. The lock enables registrars to “lock” or suspend a .uk domain name when there is evidence of illegal activity. The lock should not be used where the registrant is suspected or accused of civil wrongs such as the infringement of intellectual property rights.
(5) Dispute Resolution Procedures
Disputes concerning gTLDs are managed by ICANN-authorised dispute resolution service providers. Disputes concerning ccTLDs are managed by the individual country registry (such as Nominet in the UK).
The Uniform Dispute for Domain Names Resolution Policy (“UDRP”) is automatically incorporated into the registration agreements for all ICANN-accredited registrars in respect of gTLDs. Complaints under the UDRP can be filed with a number of designated bodies, the largest of which is the World Intellectual Property Organization (“WIPO”).
Countries not using ICANN’s UDRP may use a different form of dispute resolution. So, for instance, Nominet has its own dispute resolution procedure for .uk domain name disputes. The Nominet procedure is similar to that adopted by ICANN.
The UDRP procedure is relatively quick and also reasonably cheap. Decisions are generally given within 60 days of filing. In assessing the costs of the process it should be noted that the recovery of legal fees and/or damages is not permitted.
Other advantages are that the jurisdictional issues which may be problematic when taking legal action are not present under the UDRP procedure and, once the complaint is filed, the domain name which is the subject of the complaint cannot be transferred to any third party until a determination has been made.
In order to successfully bring a complaint under the UDRP the complainant must be able to show:
(1) The domain in dispute is identical to, or confusingly similar with, a name, trade mark or service mark in which the complainant has rights. This covers unregistered trade marks. According to s 1.7 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” in order to establish common law or unregistered trade mark rights, a complainant “must show that the name has become a distinctive identifier associated with the complainant or its goods and services.”
(2) The registrant must have no legitimate rights or interests of its own in the disputed domain name.
(3) The complainant must show that the disputed domain has been registered, and used in, bad faith. The UDRP sets out a non-exhaustive list of circumstances which will constitute bad faith. Whilst UDRP decisions are not binding on panellists (or on the courts), previous decisions indicate that the use of a disputed domain name in relation to criminal activity involving money transfer fraud will constitute bad faith.
Each case will turn on its own facts and appropriate legal advice should be sought. However, the Harwood Chambers case demonstrates the way in which chambers may be adversely affected by online scams and the types of issues which will need to be considered in order to protect their position and repute.
Caroline Kean is a partner and Rachel Barber is a solicitor at Wiggin LLP