Trademarks and Domain Names
A domain name is a global addressing system. Domain names are located and are translated into Internet Protocol addresses (IP addresses) and vice versa. A domain name such as www.trademarkroom.com provides a unique identification for the IP address, which is located at a physical point on the Internet.
Registering domain names as a trademark has become a common problem for many individuals and businesses. This is because although the function allows users to locate businesses, people, and other information in an easy and efficient manner, domain names have acquired a further significance where businesses and individual’s conflict with other businesses and individual’s that already have existing domain names protected by intellectual property rights.
The main disputes that arise from the subject of domain names are ones that concern the practice of cybersquatting. This is where a third party registers a domain name as a trademark by exploiting the first come first serve nature of the registration system. The trademark, famous person or business that has been registered has no connection to the third party. However, as the holder to the registered mark, cybersquatters can then auction the domain name directly to the business or individual of concern, at a price far beyond the cost of registration. Alternatively, cybersquatters may use the registered domain name to attract people interested in the other business or individual, to their own site.
An example of one of the clear and most obvious cases of cybersquatting was the case of BT Plc v One in a Millions Ltd (1999), where two ex students registered several thousand Internet domain names and were sued successfully by the claimants for passing off. However, in the case of French Connection Limited v Sutton (2000) the court found for the defendant who registered ‘FCUK.co.uk’, because he did not try to make money to some extent, unlike the BT case, and had some legitimate reasons to register the domain name as his own (e.g. Football Club UK).
In the last year, cases of cybersquatting reached a record high in the UK with complaints to the World Intellectual Property Organisation (WIPO) reaching 280 in comparison to the 111 complaints just 10 years ago. These figures are set to continue to rise with new domain names being introduced. But it is not only cybersquatters that pose a challenge to brand owners. For example, there have been 13 applications for .app including Google and Amazon. John Olsen, editor of the guide to domain name protection said ‘website branding has become a hugely competitive area over the past few years, as companies do an increasing amount of their business online. Having the right domain name can be enormously valuable’. This is why all businesses want to be the first to register their domain name, because in order to regain control of a domain name once it is taken, businesses have to prove that it is similar to a trademark they own, they have a right to use the domain name, and that it was registered in bad faith by the owner, which can not always be that easy.