Why is protecting and securing your domain names important from an Intellectual Property perspective?

A rapid number of individuals and businesses are promoting themselves through their websites. Those same people are also often marketing and selling their goods or services over the internet. If you are thinking of setting up and trading via a website you need to be aware of the Distance Selling Regulations, the Data Protection Act and you should consider having a privacy policy and terms and conditions of trading.

Intellectual Property lawyer Pina Mazzotti explains the importance of securing a distinctive domain name that will direct customers to your website.

We would always recommend to clients that they purchase a domain name basket, this means purchasing a number of similar domain names to your first choice domain name if possible. Domain names are not that expensive and if you purchase a selection of domain names at the outset you may avoid confusion with other businesses in the future from confused customers. You should try and secure both the ".com" and "co.uk" for your domain name, but possibly consider registering common misspellings of the same address or adding punctuation to the domain name for example "harveyingram.com", "harvey.ingram.com", "harvey-ingram.com", "harveyingam.com."

A number of domain names are often snapped up by third parties who are not necessarily using the relevant trading name, this has often prompted acrimonious and expensive litigation. An example of this activity more commonly known as "cyber-squatting", was seen in a case involving JK Rowling personally and also the Harry Potter domain names owned by Times Warner.

Once you have secured the domain names you require you then want to ensure people are not using a similar name. This protection of your trading name links directly with Trade Mark and Brand Protection. In the recent past, if a competitor is using a trading name and domain name which is similar to your already established business name there were two main ways of putting an end to this unfair competition. Firstly, would be relying on a registered trade mark and secondly would be a tortuous action known as Passing Off. If there is no registered trade mark for your trade name, a trade make infringement case is not possible, but in the absence of a registered trade mark, a trading name may be protected by a passing off action. This requires companies to show that they have generated goodwill through a trading name's use and that any use of the same or similar name by a third party is likely to lead to a loss of business or other demonstrable damage. Passing off actions can be expensive because of the need to prove goodwill and confusion in the minds of the public.

There are also cheaper, quicker and often more effective remedies available. When a domain name is bought, the purchaser agrees to be bound by a set of terms and conditions, including a domain name dispute resolution procedure. The procedures provide a mechanism whereby if an existing business can show it had pre-existing trade mark rights, whether a registered trade mark or passing off rights, it will usually be successful in having a domain name similar to its trade mark transferred to the business.

These procedures are run by ICANN, for ".com" domain names and Nominet for ".co.uk" domain names. They are relatively quick, and decided by a nominated adjudicator and are certainly far cheaper than a passing off action with these domain name disputes. It is necessary for companies to show bad faith by any rivals. Bad faith can be shown in many ways, but if you can show that the name was chosen to divert trade to a rival business then your application to have the domain name transferred to you is likely to succeed. Of the applications made to ICANN and Nominet for transfer of domain names, about nine out of ten cases are successful.

For more information on domain name protection or general intellectual property advice, please contact Pina Mazzotti on pina.mazzotti@harveyingram.com or call 0116 257 6166.