An increasing area of concern for businesses in the modern environment are confusingly similar domain names or identical domain names with different “tld” extensions e.g. “.com” versus the new “.co”. Business are investing heavily in on-line presence with the sharp increase in smartphone users and the more restricted space for Google and other search engine results on smartphone screens. The well established US principles of brand protection have filtered through to Europe and the rest of the world. Businesses know the importance and benefits of consumer recognition of their product or brand. The promotion of their brand is increasingly happening on-line rather than the traditional advertising media of print and television.
In the on-line environment Not only do businesses have to contend with competitors or confusingly similar domain names, but also the deliberate abuse of their brand and/or domain on-line. A classic example of this is the world renowned “Lego” brand. This organisation must act continually to prevent unscrupulous web users from abusing one of the internet’s highest searched terms to their own ends. Typically domains are registered containing the “Lego” brand e.g. “buylegoinfrance.com”, in an effort to drive traffic to sites that are unauthorised and designed to generate money for the domain owner.
Under the right conditions business (and certainly businesses with registered trade marks) can protect the goodwill surrounding a domain name by applying for transfers to them of the offending domain name under the Uniform Domain Name Resolution (UDRP) Process at the World Intellectual Property Organisation (WIPO).
In any application the business claiming the right to the offending domain name must establish three critical grounds to the satisfaction of the WIPO panelist:
- that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- that the disputed domain name registered by the Respondent has been registered and is being used in bad faith.
Applications for WIPO for recovery of domains can be costly. It is imperative for businesses who consider that they have valuable IP or intellectual property rights to protect to firstly secure the most popular domain names comprised of that brand, business or product name. A properly collected and maintained domain name or IP bundle combined with a registered trademark or trademarks is a far more cost effective brand protection strategy.
Our members are experienced domain name and on-line IT law experts. If you are experiencing issues with on-line passing off, trademark infringement in meta tags, screen scraping or other issues affecting your site, contact us today and we will set up a consultation wtih our specialist.
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