Someone Has Registered Domain Names Similar to Mine and is Diverting Business Away from Me
Client: My business is called ACARSONLINE and I have spent several years building it up. I registered www.acarsonline.com as my domain name. One of my competitors which only set up in business last year has registered www.acaronline.com and has re-directed this domain name to its site. Its business name is completely different from mine.
Simon Halberstam (Head of the Weblaw Group at Sprecher Grier Halberstam LLP): This sounds like a classic example of "passing off". This means that your competitor has intentionally created potential confusion in the mind of the public, leading people looking for your website to its website without them realising that they are not where they wanted to be.
Client: What can I do about this?
SH: You have 2 realistic legal options:
- You can go to court and sue for passing off and, if you win and prove diversion of business and loss of profits and/or goodwill, you may be awarded substantial damages; or
- Rather than go to court, which always has legal risks and usually involves substantial costs, you may prefer to go through the dispute resolution procedures provided by the various domain name registrars. These usually involve little if any cost. If successful, you will get the names transferred to you but these systems do not provide for the complainant to recover damages and therefore would not apply the same sort of pressure on your competitor. Nominet runs the .co.uk system.
Client: I don't have any registered trademarks for my company. Does this affect my chances of success at court?
SH: If you had any registered trademarks which included the same word or words as in your URL/product names, your position is even stronger as a registered trademark confers on the owner a monopoly of the use of that term and in that case you would have been able to sue for trademark infringement which is a much easier route in court.
© This article is copyright Sprecher Grier Halberstam LLP 2008 and should not be construed as legal advice or opinion in any specific facts or circumstances. the contents are intended for generic information purposes only. You are urged to contact a suitably qualified lawyer for specific advice.