Online presence

Domain names are a very important part of the marketing toolkit of any business. A domain name is your address or location on the internet. Through that domain name you are able to tell potential customers and existing customers, who you are, what you do and how to get hold of you.

A domain name often contains your business or product name, which you may consider to be your trade mark.  However, being the owner of a trade mark, whether registered or unregistered, does not automatically entitle you to use that mark as a domain name. This is because the same trade mark can be registered or simply used for different goods or services by different people without any conflict. Therefore, someone may have already registered the domain name you want using your trade mark. 

It is sometimes possible to successfully complain about a domain name using your trade mark if it is apparent that the registration of that domain name causes a conflict. However, to be successful you will need to prove that (a) you own the name or trade mark which is identical or similar to the domain name, and (b) that the registered domain name is abusive when in the hands of the registered owner.

It is often easier to prove ownership of a trade mark if that trade mark is registered, although registration is not necessary. 

So what is an abusive registration?

If the domain name was registered or acquired by the owner and at the time it took unfair advantage of or was unfairly detrimental to your rights, then it might be considered abusive. Alternatively, if the domain name has been subsequently used in a manner which has taken unfair advantage of, or has been unfairly detrimental to your rights, then it may be considered to have taken on an abusive nature.

It can be difficult to support a complaint against a domain name right. Sometimes there can be complications with the proof of ownership of an unregistered trade mark and providing the necessary arguments and evidence of an abusive registration can be complicated. The official decision maker appointed in a domain name complaint will not do any background reading to investigate the ownership and abuse and they will not decide in your favour if you have not given them proof. 

We can advise on the likelihood of success of a domain name complaint and we can help with the preparation and filing of a complaint.

If you would like to speak to us about a specific domain name issue, please get in contact.