Domain name protection
Domain name protection
Domain name protection lawyers give guidance on domain name disputes
The point of a trade mark
The point of a trade mark is to identify the origin of a product or service and the cornerstone of liability is confusion. Unlike in the US, in UK law a trade mark cannot be infringed by dilution only; there must be an element of confusion. Generally, a holder of a domain name and the holder of a trade mark to that name can have equal entitlement to that name (except when the brand name is so established that a domain name is no longer just an address).
ICANN
There are questions about ICANN`s effectiveness. The problems generated by misregistration continue to escalate. The extent to which the registration system has become abused is arguably reflected by the practice of “reverse name hijacking”. This is where the complainant is keen to obtain the respondent`s domain name for its own use. ICANN dispute policy continues to expand to keep up. The dispute policy is not just limited to considering domain names using registered trademarks. Names that have not been registered may also be considered, where it would be in breach of the legal rights of a third party to register or use the name. WIPO has tried to address domain name abuse since 1998. Most notably in the first and second report of the Internet domain name process. The management of Internet names and addresses: Intellectual property issues – final report of the first WIPO Internet domain name process, WIPO publication no. 439, and the recognition of rights and the use of names in the Internet domain name system – report of the second WIPO Internet domain name process, WIPO Publication No. 843. The WIPO arbitration and mediation centre tries to provide trademark owners with a mechanism with which to deal with bad faith registrations. An update on the domain name related activities of WIPO can be found at
http://www.wipo.int/edocs/mdocs/govbody/en/wo_ga_39/wo_ga_39_10.pdf.
Conclusion
The important thing to remember in the relationship between domain names and trademarks is that a domain name is not associated with the underlying goods and services in the same way as a trade mark, so it does not cause confusion in the mind of customers in the same way. If another organization tried to use a domain name similar to your trade mark, to confuse your customers into buying its products or service because they associated it with your stronger brand, it is certainly possible that the customers would log on to the rival Web site, but since they access the site (assuming your trade mark itself was not infringed in its contents), they would no longer be confused as to what it offered.
The way to avoid the risk of another entity using a domain name that is very similar to your own trade mark is to register the domain name effectively as a trade mark.
Actions
The best domain name protection is to register the domain name as a trademark.
Remember it is best practice to show use of the domain name.
Err on the side of domain name protection including protective registrations.
To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. Mr Peter Adediran is the owner and principal solicitor at PAIL® Solicitors. Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.