Articles and Publications
Intellectual Property and the Internet: Domain Names and Cyber-squatting
17/Jan/2006
Domain names may give rise to both passing off and trade mark issues. Domain names are signs which may be registered as trade marks, providing that they satisfy the usual criteria.
Generally domain names are issued on a ‘first come, first served’ basis and this has been approved by the English courts as the most sensible method. Therefore if you want to register leepriestley.com, you will be very disappointed. However, in the case of British Telecommunications Plc & Ors v One In A Million Ltd & Ors (1999), One In A Million was a dealer in Internet domain names and had registered the names of well-known organisations without their consent with a view to making a profit by selling them to the relevant brand owner. This practice is known as cyber-squatting. By making a false representation to the public, it constituted passing off. Although the trade marks were not actively being used, the mere registration and maintenance of a domain name that led people to believe that the holder of the domain name was linked with a company or person was enough to make the domain name a potential "instrument of fraud" and amounted to passing off. The court made provisions as part of the judgment that the domain names were to be assigned back to the party with the goodwill and the name.
Although cyber-squatting is far rarer than it once was, we are now regularly seeing clients who have discovered competitors using similar sounding domain names to piggy-back on the commercial success of our clients’ trademarks. For example, a client, x.co.uk , found that a competitor had registered x.info and was selling similar products which arguably led to customer confusion. It is worth thinking about whether anyone is infringing your trademark in this way.
If you have a trade mark and you think someone is infringing it, in order to succeed in an action for passing off, you need to show that:
• You have built up goodwill in the mark;
• The defendant's use of the mark constitutes a misrepresentation which is likely to lead members of the public to believe that the goods or services offered by the defendant are connected in some way with you; and
• You have suffered loss or are likely to as a result of the defendant's activities.
If you would like to discuss this matter further then please contact one of our contact one of our Technology or IP specialists on 0845 129 2300.
Other related articles: Googling which looks at the recent case law around trademark infringement and search engine responsibilities.
Intellectual Property and the Internet: Metatags.
Entering the European Domain.
Press release : EU launches its own Web Domain.
Generally domain names are issued on a ‘first come, first served’ basis and this has been approved by the English courts as the most sensible method. Therefore if you want to register leepriestley.com, you will be very disappointed. However, in the case of British Telecommunications Plc & Ors v One In A Million Ltd & Ors (1999), One In A Million was a dealer in Internet domain names and had registered the names of well-known organisations without their consent with a view to making a profit by selling them to the relevant brand owner. This practice is known as cyber-squatting. By making a false representation to the public, it constituted passing off. Although the trade marks were not actively being used, the mere registration and maintenance of a domain name that led people to believe that the holder of the domain name was linked with a company or person was enough to make the domain name a potential "instrument of fraud" and amounted to passing off. The court made provisions as part of the judgment that the domain names were to be assigned back to the party with the goodwill and the name.
Although cyber-squatting is far rarer than it once was, we are now regularly seeing clients who have discovered competitors using similar sounding domain names to piggy-back on the commercial success of our clients’ trademarks. For example, a client, x.co.uk , found that a competitor had registered x.info and was selling similar products which arguably led to customer confusion. It is worth thinking about whether anyone is infringing your trademark in this way.
If you have a trade mark and you think someone is infringing it, in order to succeed in an action for passing off, you need to show that:
• You have built up goodwill in the mark;
• The defendant's use of the mark constitutes a misrepresentation which is likely to lead members of the public to believe that the goods or services offered by the defendant are connected in some way with you; and
• You have suffered loss or are likely to as a result of the defendant's activities.
If you would like to discuss this matter further then please contact one of our contact one of our Technology or IP specialists on 0845 129 2300.
Other related articles: Googling which looks at the recent case law around trademark infringement and search engine responsibilities.
Intellectual Property and the Internet: Metatags.
Entering the European Domain.
Press release : EU launches its own Web Domain.
