Domain Names And Protecting Your Brand Online – Part 2

In the last blog post on Domain Names And Protecting Your Brand Online, we looked at the importance of brand protection online.

This post focuses on what a company can do to protect its brand against infringers and cybersquatters.

Domain name infringement has strong ties with trade mark infringement. But the beauty of domain name disputes is that they don’t have to be dealt with in court.

For example, disputes relating to infringing .uk domain names are submitted to Nominet. The costs are low in comparison with other legal disputes and can be as little as £200. And, disputes relating to other commonly used domain names (.com, .info, .net – more here) are submitted to WIPO. Again, costs are low and start at as little as $1,500.

The Dispute

Brand owners submit complaints to the relevant body, either Nominet or WIPO, about any domain name that infringes its rights. To do this the brand owner needs to show the following:

  • It has a trade mark (whether registered or not).
  • The owner of the domain name has no rights in the brand itself, nor a legitimate reason for registering the domain name.
  • The domain name has been registered and is being used in bad faith.

Brand Owner’s Rights

  • The easiest way of demonstrating the brand owner’s rights is to produce evidence of a registered trade mark or an application for a trade mark.
  • If relying on unregistered rights, it’s necessary to provide documentation showing use of the mark, such as marketing materials.
  • The trade mark, or other evidence of the company’s use of the brand, should pre-date the date on which the owner of the infringing domain name registered it.

No rights 

If the owner of the domain name doesn’t have any rights pre-dating the brand owner’s rights, the brand owner can claim that the owner has no rights in the domain name. The responsibility will then shift to the owner of the domain name to prove otherwise.

Bad Faith  

Proving bad faith can be surprisingly easy. By virtue of a domain name being in the name of a third party that has no rights to it, the brand owner is unable to register that domain name itself. This is evidence of bad faith.

However, a strong case will list other examples of bad faith. When answered in the affirmative, these questions are all evidence of bad faith:

  • Is the domain name being used for a website featuring the brand?
  • Is the domain name being used to sell or advertise goods and services similar to those of the brand owner?
  • Has the owner of the domain name offered to sell the domain name, or is it listed for sale?
  • Has the domain name been offered to a competitor of the brand owner?
  • Is the owner attracting internet traffic to its own website with a view to making a profit?
  • Is the domain name causing consumer confusion?
  • Is the owner of the domain name a competitor of the brand owner seeking to disrupt the brand owner’s business?
  • Has the owner of the domain name registered other domain names featuring other brands?

What are the results? 

The benefits of filing domain names disputes are three-fold:

  • If successful, the domain name will be transferred to the brand owner.
  • Serial infringers will come to know that the brand owner monitors and takes enforcement of its rights seriously.
  • The brand owner will gain market intelligence and an idea about the extent of online infringement of its brand(s) and where best to focus its brand-enforcement efforts.

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The information in this blog post is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from JAG Shaw Baker or the individual author, nor is it intended to be a substitute for legal counsel on any subject matter.

The post was written by Charlie Lyons-Rothbart, Associate at JAG Shaw Baker.

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