In this first Blog – I’d like to talk a little about the relationship between Trademarks (and Trademark Law) and Domain Names.
Trademarks are a type of Intellectual Property that a trading organisation owns which form a type of legal ‘receptacle’ for goodwill. Domain Names are a sub-specie of Trademarks and also are reflective of and support the same rules internationally as Trademarks.
It’s most important that the Trademarks are owned not just through Common Law Rights, but through Registration. The controllers of Domain Names (for example – “Nominet” in the UK) in their dispute resolution systems make it much easier for a Registered Trademark Owner to displace a Cybersquatter.
In a case I recently won for a client, Nominet posted their Expert’s Judgement on the Nominet Web-Site and here is a small extract (I was acting for the Complainant):
“Having established that the 2006 registration of the Trademarks invests the Complainant with the appropriate Rights, it is easier for the Expert to take a view, on the balance of probabilities, as to whether the registration of the Domain Names has been used in a manner which has taken unfair advantage or has been unduly detrimental to the Complainant’s Rights.
Paragraph 3 of the DRS Policy sets out a non-exhaustive list of circumstances which might support a finding of Abusive Registration. The list includes, at Paragraph 3.a.ii
“Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”
The Expert considers that there is a real risk of confusion on the part of users who refer to the Domain Names to buy or to seek information about the Products.
There is, on the balance of probabilities, a material risk of prejudice to the Complainant and its business. The Respondent’s action in removing information about the Products from the sites to which the Domain Names resolve is clearly an inadequate response, particularly if users continue to be re-directed to sites offering competing products.
The Respondent addresses few of the points made in the Complaint, but makes unsupported claims for its success as a distributor of the Products, presumably to show that its registration of the Domain Names benefitted the Complainant. Even if this were once the case, it does not help the Respondent in the present circumstances.”
So let’s all be aware. To protect Domain Names in a systematic and cost-effective manner – Trademark Registration is a key part of such a commercial strategy.
