Brexit from another angle: Domain names and donkeys

Registration of thebrexitparty.com by anti-Brexit campaign group ‘Led by Donkeys’ has been the cause of anger and embarrassment for Brexit Party leader Nigel Farage. The domain name is not proving easy to retrieve, as we explain.

The 'Brexit Party', founded in November 2018 and active since January 2019 under the leadership of Nigel Farage, tried to do the right thing and put IP protection in place before launch. It registered trademarks for 'The Brexit Party' and 'Brexit Party' on 25 June 2019, as well as figurative marks (pictured, right) on 27 June 2019. Unfortunately for it, it wasn’t as prepared with its domain name registrations.

A lesson not to leave domain names until last...

The party does have a dedicated website under the domain name thebrexitparty.org, registered on 20 January 2019, on which it publishes the party's ideas and proposals. However, it was beaten to the .com by anti-Brexit campaign group ‘Led by Donkeys’. That satirical group had registered thebrexitparty.com on 26 October 2018, presumably inspired by news reports (at the end of September 2018) that plans were afoot to launch “a Brexit party” to campaign further for UK’s exit from the EU.

And, the story doesn’t end there. Investigation into the WHOIS record (pictured, below) shows that the.com domain name had actually been registered first in August 2016 by the UK Independent Party (UKIP), which was under the leadership of Nigel Farage until July 2016. The domain name had presumably been abandoned, allowing its current holder to register the URL and forcing the Brexit Party to settle for the .org. 

Clearly registered in bad faith, but...

Discovering that the .com is already taken is usually the end of the road for most organisations, assuming of course that the earlier registration was made in good faith. In this instance, however, the group has used the domain explicitly to publish anti-Brexit content that is very critical of Nigel Farage and his party. Indeed, a search on archive.org shows that, in April 2019, Led by Donkeys hijacked the Brexit Party logo and used it on the site (see below) on content criticising the party and its leader.

Little surprise that the Brexit Party (the real one) has sought to recover the domain name. However, as the ‘cybersquatters’ were quick to remind Farage, the disputed name predates the rights that the Brexit Party could try to claim. Out of the goodness of their hearts, however, they propose to transfer it to him for an amount exceeding one million pounds. This, the website says, would be used to finance an organisation to support migrants:

Perhaps alive to the threat of trademark infringement claims, thebrexitparty.com no longer contains any reference to the Brexit Party logos, but continues its criticism of the politician and his party. This is currently in the form of an advent calendar of the unpleasant surprises that Brexit would hold for the British, and featuring anti-Farage videos.

Given the content and the fact this situation has been going on for months, you may wonder why the Brexit Party has not been able to get the name back and shut down the site.

A case of bad planning

Clearly the registration and use of the domain name thebrexitparty.com is in bad faith and without legitimate interest. However, in the absence of prior rights, the Brexit Party will have difficulty justifying a complaint using the Uniform Dispute Resolution Procedure (UDRP), the procedure normally used by rights holder to obtain the abandonment or transfer of the domain name registered in bad faith.

The issue is further complicated by the fact that UKIP and Brexit Party are two separate entities. The latter is not able to rely, therefore, on the prior registration of the disputed name by the former organisations.

Nevertheless, Nigel Farage is the common denominator in both parties, which suggests the possibility of a joint complaint by the Brexit Party and the UKIP. Other avenues that the party is likely to explore include bringing judicial proceedings, which would allow for a broader assessment of the facts related to the case. This approach seems more appropriate since, in addition to a case of cybersquatting, the site includes a number of defamatory statements. Given, however, that the UK General Election is only weeks away, it remains to be seen what the Party will be able to do in time.

Don’t make the same mistakes

The story is an important reminder of the need to align domain name registrations with a brand's overall trademark portfolio and its future business plans (for guidance on this, please read our article ‘Is it time to rationalise your IP portfolio?’). For high-profile or sensitive launches, in particular, IP owners should also take steps to ensure domain names in the main extensions are secured as soon as possible and certainly before any public communication about the project. In some instances, this should even be before the trademark registration, since the latter will be published into the public domain.

For further advice, please speak to your Novagraaf attorney or contact us below.