With an increasing amount of business carried out via the internet, domain names are an integral part of a company’s branding and most businesses have registered their key trade mark, brand or trading name as a domain name in the appropriate country/region etc. (e.g. mathys-squire.com, mathys-squire.co.uk).

Increasingly, Mathys & Squire advises and assists clients in relation to issues surrounding domain names.

With our experience of domain name issues, Mathys & Squire can provide strategic help to clients by formulating a plan for protecting their important brands and domain names in an integrated way. On behalf of our clients we can manage the registration of their domain names and deal effectively with any disputes which might arise.

Not only should a business register the business’s key trade marks and trading names as domain names in the important markets for the business, but if a domain name includes a trade mark which has not been registered already as a trade mark, the distinctive part of that domain name should be registered as a trade mark. So, for example, the owner of a business called Bloggo operated solely in the UK should register the domain name bloggo.co.uk and also the trade mark BLOGGO. This is because domain names are issued on a first come first served basis, taking no account of existing trade marks. Owning a trade mark registration will generally cut down the costs and time involved in proving that you own the necessary trade mark rights if a third party registers a conflicting domain name.

As with trade mark disputes generally the more successful a business is in building up a reputation surrounding their brand, the higher the likelihood of others seeking to trade on the back of that reputation. This issue frequently arises on the internet where it is cheaper and easier for competitors to set up a presence.

If you find that a third party has either used your trade mark or an obvious derivation of your trade mark in a domain name, or has in some other way used your trade mark in a potentially illegitimate way on the internet (e.g. by using it on pay-per-click websites which link to sites from which competing products or services are offered for sale; or by use as a metatag on a website), there may be action you can take.

We advise our clients on the best ways of tackling a situation where someone uses their trade mark in a domain name and also the bringing of proceedings, including preparing the necessary documents and submissions.

Obviously, it is most important for a business to register key domain names as a preventative measure. But, if you find that others have got there first, it may be appropriate to apply for cancellation, or transfer to you, of the offending domain name. Although action can be brought in the courts, a useful alternative are the domain name registrars’ dispute resolution policies. These policies generally require a complainant to show (1) ownership of an identical or confusingly similar trade mark, (2) the absence of a legitimate reason for the owner of the domain name to use that domain name and (3) registration of the domain name in bad faith. If these three things can be shown, cancellation or transfer of the domain name will be ordered.

Our advice is to be vigilant about third party use of your brands on the internet and, where appropriate, to take action against any misuse. This will send a strong message that you do not allow others to profit from goodwill in your trade marks and that the misuse of your trade marks will not be tolerated.