Domain Names, Trademarks and Brand Protection

Domain names and trademarks are obviously vital elements of brand protection. I have dealt with many cases where third parties have registered domain names which my clients feel should belong to them. These break down into three main categories, each of which requires a different approach.

i. Cybersquatters
This is the situation where the registrant has no legitimate interest in the domain name and has registered it to make money by diverting internet traffic attracted by your name and/or by forcing you to buy the name at an inflated price to protect your brand. The first step is often a “cease and desist” letter but inured cybersquatters will often ignore these, especially if they are not in the UK. Whilst there are legal processes to deal with such registrants, they are time consuming, uncertain and, generally, expensive so in some cases it may make sense to eat one’s principles and seek a deal with the devil.

ii. Competitors
Competitors often seek to gain a competitive advantage by registering a domain name that precisely reflects your corporate or brand name or is a variant thereof. If a “cease and desist” does not work, the options include proceedings either via the domain name dispute protocols or through the courts. In the case of the courts, the action would usually be framed as “passing off”. These cases can be very complicated especially if your brand name sounds generic. In all such proceedings, a registered trademark can be extremely helpful to support your claim.

iii. Pre-existing Registrations
These can be the most frustrating situations as the registrant often registered the name speculatively and makes no use of it. You have a particular problem if the registration pre-dates the start of your business or at least is likely to have been made without knowledge of the existence of your business. Even in this situation, if the registrant at some subsequent stage makes use of the domain name to trade off your goodwill you may well have a good legal case to make, especially if the domain name is a rather than a .com.

Pre-emptive Registrations
Whilst it is not possible to register every domain name variant, many problems can be avoided if you register the key variants at the outset. These will often be the .com, .net, and those with suffixes reflecting the major territories in which you are or plan to be active. Approriate trademark registrations can be an invaluable reinforcement to your domain name registrations, enhancing your chances of procuring transfer of domain names from third parties and, at the same time, enhancing the value of your business.

Please click here to email Simon Halberstam, Head of Technology Law, or call 020 3206 2781.