Dealing with domain name disputes

Domain names are used to identify one or more IP addresses. For example, willans.co.uk is the domain name that is used for our website and related webpages.

If you are going to set up a new business, it is worthwhile checking whether anyone already owns the domain name you would like to use, and this can be checked through ‘WHOIS’ which lists registered domain names.

Just because you trade using a certain name, and may even have a registered trade mark for that name, it does not necessarily mean that you are entitled to use the domain name. A third party that has registered your trading name does not need togive it up if they are using it in good faith.

However, we find that there are often instances where a competitor may register a domain name in bad faith. For example, we have dealt with many cases where a business will register a domain name similar or identical to that of a competing business in the marketplace. They may do this to try to “pass off” their business as that of an established competitor and to divert trade away from them, or otherwise benefit from the goodwill in that business.

Registration of the domain name may be just one aspect of a passing off campaign. For example, the competitor may use a similar trading style, perhaps with a similar website design, logo or other similarities intended to confuse customers in your marketplace. You can apply to Nominet to deal with concerns over domain name registration,and in certain circumstances it will transfer to you the domain name being used by the competitor.However, if you are looking for a wider remedy to include damages and costs, you could issue proceedings through the courts.

Our team frequently deals with passing off cases involving domain name disputes and other intellectual property infringements. Often, a strongly worded letter before action with the threat of court proceedings may lead to a swift resolution in cases of this nature. This is often enough to persuade competitors that are acting unlawfully to transfer the domain name, and to undertake to stop infringing intellectual property rights. However, if this does not work, there are other avenues we can advise on to help you to protect your intellectual property.

Partner Paul Gordon joined Willans from a City law firm in 2005. Specialising in dispute resolution, he has experience in handling a broad range of commercial matters, including intellectual property, director and shareholder disputes, and engineering and construction cases.