More than a Domain - Protecting your Brand
Simon Halberstam, partner and head of e-commerce law at Sprecher Grier & Halberstam LLP and Weblaw, outlines some scenarios to help you protect your brand online.
The right domain name is vital in any online branding strategy but is only one part of the jigsaw. For example, if you own a domain name but another company owns the corresponding registered trademark. A registered trademark in a domain name dispute is almost like an Ace in a card game. Thus the other company may be able to prevent you using your domain name and even obtain it from you. Also, what if you own the .co.uk but a competitor owns the .com?
The absence of a registered trademark or the whole range of domain names is not necessarily fatal.
You Can't Register Every Domain Name Variant
It is not practicable to register every single variant of your business name. Most businesses will settle for the .com and the national Top Level Domain such as .co.uk.
There are different ways in which a company may seek to use a rival's brand name. Not each of these is identical in the eyes of the law and we will now briefly consider some of the most common scenarios and the likely outcome.
Unscrupulous Competitors - Variations on a Theme A. Diversion to a different WebsiteThis occurs where a competitor registers a very similar domain name to yours and then diverts the traffic to its own website. Extending our example above, the owner of flowersgalore.com, a rival of daffolily.com might register daffo-lily.co.uk and then have all visitors to that URL automatically diverted to the flowersgalore.com website.
Probable Verdict - Flowersgalore will end up losing proceedings brought by daffolily whether through the courts or Nominet. Bad faith and passing off are typically relatively easy to find in this sort of case.
B. Use of a similarly named WebsiteThis occurs where a competitor registers a very similar domain name to yours and then maintains that site which is usually a mirror image of its own website. Again, extending our example above, the owner of flowersgalore.com, a rival of daffolily.com might register daffo-lily.co.uk and maintain a site at daffo-lily.co.uk which has the same content as its site at flowersgalore.com.
Probable Verdict - Flowersgalore will end up losing proceedings brought by daffolily whether through the courts or Nominet. Bad faith and passing off are typically relatively easy to find in this sort of case.
C. Registration but No Use of a similarly named WebsiteThis occurs where a competitor registers a very similar domain name to yours and then sits on it i.e. there is no content at the relevant URL. Extending our example above, the owner of flowersgalore.com, a rival of daffolily.com might register daffolily.co.uk but do nothing with the registration. This could of course have a negative impact on daffolily's business as people who assume that daffolily, a UK business will have registered daffolily.co.uk and find nothing when entering that URL into an internet browser may think that daffolily is no longer in business.
Probable Verdict - daffolily has a potentially difficult case on its hands as it cannot establish confusion in the eyes of the public which is a major factor in establishing passing off.
D. Using a Competitor's Product Name or URL as a Search Engine AdwordThis occurs where a competitor pays a search engine to bring up its website when someone making a search enters a rival's company name or a well-known product or brand name.
Again, extending our example above, the owner of flowersgalore.com, a rival of daffolily.com might pay the search engine company to bring its URL up on the search engine results when the searcher enters daffolily in the search engine.
Probable Verdict - This scenario is more complicated. Flowersgalore may well argue that it is well known that Search Engine ad words results bring up other entities providing similar or identical services and that as these ad word results are usually set out separately under a heading such as "sponsored links", there can be no real confusion in the mind of the searcher. In this case, daffolily.com may consider whether its best course of action would be against the rival or the search engine company that has enabled this confusion to occur.
Neither action will necessarily be straightforward or successful.
Recommended Course of Action The way to deal with any particular case will require individual consideration of the facts. However, writing a "cease and desist" letter to the rival is usually the first port of call before one initiates legal proceedings.
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