Cybersquatting usually involves a party registering a domain name, often in bad faith, to gain a commercial advantage – such as selling the domain name or using it as a link to their own website to divert customers. A recent case in the Intellectual Property and Enterprise Court offers renewed comfort to businesses seeking to protect their domain names and online brands. The Judge awarded in favour of a company who made and sold pole-dancing equipment under the brand names “Silkii” and “X-Pole”. The business owner had complained about the registration of domain names containing the Silkii brand – a registered trademark – by a competitor who later tried to sell him the domains and two Twitter accounts. The Court ruled that by registering the domain names, the competitor had threatened to mislead the relevant public by suggesting that its own business was linked to the Silkii brand. This amounted to “passing off” the competitor’s brand, products and website as its own. Although domain name registration is a relatively straightforward process, it can cause a business significant problems if not done properly. The following advice aims to help small businesses avoid some of the potential problems. There is no automatic right to a domain name – they are available on a first come first served basis. If you have developed a new product, business or brand and you want to market it online, check out your preferred domain names as soon as possible. If a third party has already registered your favoured domain name, there may be little you can do to force them to transfer ownership to you. Do not register competitors or third party brands as a domain name. Courts have consistently found in favour of brand owners in such cases of cybersquatting. If the domain name is not essential to your business, but you would like it, keep a note of the date its registration lapses. If the current owner does not renew it, you may be able to purchase it. Equally, if you have registered domain names important to your business, do not allow them to lapse. If you do encounter a problem, consider using a dispute resolution service. For example, in the UK domain names ending “co.uk” are overseen by Nominet, which provides a relatively straightforward and cost effective dispute resolution service. However, the powers of the dispute resolution service are generally limited to a transfer of the domain name and, unlike a court, the service cannot make any order for costs or damages. Consider buying variations of your preferred domain name in addition to the domain name itself, including ones with common typographical mistakes in relation to any words used within the name. If you are likely to be trading in overseas’ markets you may want to purchase domain registrations in those countries as well. As with all intellectual property, actively monitor domain name activity in order to protect your position. For many businesses, operating online is fundamental for growth and a web presence is instrumental to a marketing strategy. Monitoring, maintaining and ultimately, protecting your online brand from potential cyber squatters is crucial if your business is to succeed. Roisin McCrory is a partner at hlw Keeble Hawson.
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