Domain names v Trade marks

Posted by Jane on March 19, 2013 / Posted in Trade Marks
Domain names v Trade marks

Simply registering a company name at Companies House or an internet domain name with a registrar (such as Nominet UK) does not give you automatic rights to have this same name accepted by the IPO as a trade mark. The previous registrations do not give you any exclusive right to use that name. Furthermore, it is possible for a domain name or company name registration to infringe someone else’s trade mark. There is no simple answer as to whether the registration of a domain name incorporating a registered trade mark amounts to trade mark infringement under the Trade Marks Act 1994.

Not every potential use of a domain name necessarily falls within the ambit of trade mark protection. For that reason it should not be assumed that the mere registration of a domain name that includes someone’s trade mark will automatically result in a finding of a trade mark infringement or passing off. However, especially in the case of domain names incorporating very well-known trade marks, the court would require convincing evidence to displace the natural suspicion that the domain name has been registered for immoral purposes. 

The single act of registering a domain name which resembles the trade mark has sometimes been held to amount to a breach of trade mark law in itself, but usually the enquiry is broader, looking at the totality of the defendant’s conduct, including the way in which the domain has been used.

There are two notable cases which show how the courts differ in their perception. Firstly, British Telecommunications Plc v One in a Million Ltd was a case where the defendants claimed that the registration of a name such as “” was not inherently deceptive, since a company other than the respondent V might wish to use it, and was not therefore restrainable as an instrument of fraud. Whereas, the respondents contended that, used as a business name “” was distinctive of V and use by another was deceptive. It was held that the domain names registered were instruments of fraud and injunctive relief was appropriate.

In the case between French Connection Limited v Sutton it was established that unlike British Telecommunications, it was arguable as to whether F had established goodwill in the name FCUK. It was also arguable whether any confusion was caused by AT’s use of the name, or whether F had suffered any likely or actual damage by such use.

Case law in this area is few and far between due to the creation of the WIPO UDRP alternative dispute resolution service. The list below states when a trade mark proprietor can contest the use of a third parties domain name:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or

(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

The above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.

It is possible for registered trade mark owners to issue a claim under the Trade Marks Act 1994 to prevent another person using a sign in the course of trade that is identical or confusingly similar to a registered trade mark or to prevent any use of a trade mark, provided that it would be detrimental to the character or repute of the mark or takes an unfair advantage of it.

In the case where someone is using your trade mark within their domain name in order to attract potential customers, you will most certainly have a strong case, especially if the products they are selling are similar to that of yours. Even if they have the rights to use the domain name, it is possible to take court action against them for breaching your intellectual property rights.

It may become more difficult to prove that the trade mark is being used “in the course of trade” where the domain name does not have an active website or is not being used to sell goods or services. Furthermore, this may make it more difficult to prove that an unfair advantage has been taken, although the increased hits on a website could be said to increase the domain name’s value. It is thought that establishing “detriment” to the distinctive character or the reputation of the mark is sometimes an easier task.

Each domain name administrator has a dispute resolution procedure. For example, Nominet UK has a dispute resolution procedure for domain names ending (and various other .uk endings). Despite each administrator’s process being different, they often follow a similar pattern. What needs to be proven in order to have a strong claim is first, that you have the right to the domain name and second, that the third party using this domain name are doing so ‘abusively’ or in ‘bad faith’.

In order to have the third party’s domain name transferred, the person seeking to achieve this would also have to contact Nominet. Nominet will order the transfer of .uk domain names provided you can show that you have a right (whether or not registered trade mark rights) in the name which is identical or similar to the domain name and that the registrant’s registration is an ‘abusive registration’.

The behaviour required which constitutes abusive registration in Nominet’s procedure is much the same as one which indicates bad faith in UDRP decisions. Nominet usually consider a registration abusive if it has been registered or has been used in a way that creates an unfair advantage or is unfairly detrimental to the complainant’s rights.

The Nominet procedure involves various stages. The first step is a non binding, confidential and without prejudice mediation to resolve the dispute. If this was to fail, the decision will be made by an individual expert. In some circumstances, the losing party then has the option to appeal the decision to a panel of three experts or initiate court proceedings.

The Nominet UK dispute resolution procedure includes an initial free mediation service. Applying for a binding decision costs £750 (plus VAT), plus any legal fees you incur, and takes between 6 and 14 weeks. Appealing against a decision costs a further £3,000 (plus VAT).

 Harry Jeffries Southampton Solent Law Student

Jane Coyle
This entry was posted on March 19, 2013 and is filed under Trade Marks. You can follow our blog through the RSS 2.0 feed.