Registering an internet domain name is cheap and simple. But what happens if someone gets there first with your business name? It would be better to avoid the problem altogether, and we would always recommend checking domain availability and getting trade marks registered in advance of a public rebrand.
For longer than most companies have even had websites, speculators have been trying to snap up domain names, often in the hope of selling them back to somebody who actually has a real business associated with that name for a great deal more than the initial cost of registration.
Fortunately, this activity is recognised as abusive and action can be taken by businesses, especially if they have registered trade marks, to force transfer of these domains.
The rules and procedure vary slightly for the different top level domains, i.e. based on whether it is a .com, .co.uk, etc. For UK domains you will need to show that firstly you have rights in the name registered, and secondly that the registration is abusive.
Having a registered trade mark will help a lot, although unregistered common law rights to prevent use of a similar name can also count. There are a number of reasons that the registration could be abusive. If the person who registered has tried to sell it to you for a large amount of money that would be a strong ground. A registration will also be abusive if its use infringes your trade mark, among other things.
Procedurally, your case needs to be set out in full at the outset. You get one chance to get it right and so you need to take care to make sure that you put in evidence to prove the criteria are met – there is no opportunity to put in extra evidence later.
If you have a problem with an abusively registered domain name, or any other wrongful use of your brand, feel free to get in touch and we will see if we can help.
About the author
Frederick Noble is a British and European Patent Attorney at Albright IP
