Marion specialises in internet disputes, defamation/social media claims, commercial agent disputes,…View Profile View all
Most businesses own at least one domain name. However, not all businesses own or have registered all possible domain names to protect their business and Intellectual Property. For example, whilst it is common for a company name to be registered as a domain name a brand name or mark is sometimes overlooked. It is important to protect these domain names as they may be registered by a cyber-squatter.
Cyber-squatting is where a third party registers or uses a domain name in bad faith to profit from the goodwill generated by another in a name or mark. The cyber squatter usually holds the domain name to ransom in the hope that they will be paid for its release.
Whilst the use of the domain name/website can be an abusive registration for which action can be taken the High Court recently confirmed that the mere registration of a domain name can amount to passing off. Passing off is where one party holds out his goods as those of another with a view to trading off the goodwill generated in the other’s name/goods.
The Court said that the simple registration of a domain name using another’s name, trademark or brand name can amount to passing off at the point of registration. This is because the registration itself makes a representation to the public that the owner of the domain name is connected or associated with the true owner of the mark or name, thereby causing damage to the true owner of the goodwill in the name or mark. The Court stated that damage could occur even if a website was not in operation and regardless of the intended use for that domain name.
Whilst there are avenues open to the owners of names and marks to get domain names transferred, prevention is better that cure. It is therefore prudent to check that all relevant domain names are registered to your business and not available for abuse.
For further information speak to Marion Meager on 0113 2206344.