The importance of protecting your domain
A web address or domain name often forms a central component of a brand’s identity, playing a key role in their recognition in the marketplace.
Often, however, domain names can be used in a way that may be seen to replicate – and ‘trade off’ the success of – the names of recognised brands or trade marks. A tough stance is taken against this by many businesses, as the confusion among potential customers and clients can be very costly.
Recent figures from Nominet, which is responsible for running the .UK namespace, have shown a rise in this form of impersonation – 712 complaints were made last year, 55 per cent of which resulted in the domain name being transferred (meaning possession is given to the complainant) as they were deemed to be infringing the identity of another business.
One recent example involves international lingerie and beauty brand Victoria’s Secret, which successfully ordered the transfer of the domain victoriasecretbeauty.co.uk. They took action against a beauty therapist in London’s Mayfair, who claimed to have been unaware of the Victoria’s Secret brand – although the appointed expert in this dispute found that not to be a credible defence, particularly given the industry in which she operated.
The impersonation or taking of well-known web domain names is far from a new practice – shortly after the internet began to thrive in the early 1990s, the domain name of burgerking.co.uk was registered, with the purchaser then offering it to Burger King for £25,000. In the resultant dispute, the court ordered its transfer back to Burger King.
Generally, domain name disputes can be handled by invoking the Registrar’s domain name dispute policy. In order to gain control of a domain name under the domain name dispute resolution process, you would have to show that you have legitimate rights in the domain name and that the registration of that domain by the other party is an abusive one.
Much more difficult questions arise where there is a dispute between two legitimate trade mark owners under the same names. Where neither party has any superior trade marks, then usually the ‘first come, first served’ rule will apply.
Your brand is a hugely valuable asset to your business and your identity, so it is vital it is protected and that action is taken, if necessary, to do so.
Pippa Aitken is Head of IP at law firm Sintons. To speak to her about this or any other matter, contact Pippa on 0191 226 7842 or pippa.aitken@sintons.co.uk
