It's all in a (domain) name
An increasing number of people are setting up businesses with a significant online presence. An important part of this process is to register a domain name.
Broadly, a domain name is the name of a website. It is the name that internet users type in to access a website. Domain names are often used with suffixes such as ‘.com’, ‘. co.uk’ and ‘.net’.
In much the same way as a business will want to protect its name by having a company name that no one else can use, a domain name must be registered before it can be used. Registration protects the copyright and trademark in the name.
No two websites can have the same domain name. However, as there are different suffixes, it is possible for competing businesses to set up a name with a different suffix or a very similar sounding name, which could be a threat to the business that used it first. For this reason, businesses are increasingly taking action in cases where very similar domain names are used.
The Law Society’s Gazette reported that: ‘According to Nominet, which is responsible for running the .UK namespace, 712 complaints were made throughout the year – 55% of which resulted in the domain name being transferred. In 2016, there were 703 complaints, 53% of which resulted in a domain transfer.
The statistics come from Nominet’s Dispute Resolution Service (DRS), a forum for resolving domain name disputes, which often involve IP [Intellectual Property] matters.
To make a complaint through the DRS a complainant is required to have rights (including a trade mark) in a name which is the same or sufficiently similar to the domain they are concerned about. They then need to prove that the domain has been registered or used in a manner that has or might cause unfair detriment. If they can, the domain is ‘transferred’ to the complainant. The DRS aims to settle disputes through mediation or through a decision handed down by an independent expert.’
The classified advertisement site, Gumtree, made a successful claim against the use of ‘Guntree’.
The lingerie company, Victoria’s Secret was also successful in preventing the use of the domain ‘victoriasecretbeauty.co.uk.’ The cases usually result in the similar domain name being transferred to the claimant organisation.
These cases highlight the importance of considering your on-line presence and name when setting up your business.
To discuss this or any other business-related matter, contact us.