Dealing with squatters in your shop window
Websites are the ‘shop window’ for many goods and services sold on the internet, and a domain name is a valuable asset for many businesses.
When using a search engine, consumers often check the domain name in results to make sure the site is run by who they think it is. In this way, domain names have similarities to trademarks. But beware – there is a new breed of villains known as ‘cyber squatters’.
Cyber squatters register domain names in bad faith, knowing that another trader is using the URL as a trademark, or with the intention of making a profit by holding them hostage. They even go to the trouble of registering variants of popular trademark names, and have developed automated software tools to register lapsed domain names the instant they become available – a practice known as ‘renewal snatching’.
But help is at hand: using a domain name containing the mark of another business can constitute an actionable misrepresentation and, in the UK, the organisation Nominet provides a dispute resolution service. The onus is on the claimant to prove that they have rights in respect of the name or the mark. It is not necessary to specifically have a trademark registered, but if you do have a Registration this certainly helps a lot with a claim. Two recent decisions by Nominet help illustrate the link between trademarks and the eviction of cyber squatters.
The first was between British Telecommunications plc and Yes Talk Ltd, and concerned domain names registered by Yes Talk including btphonesystems.co.uk and bttelephoneengineer.co.uk. BT provides communication services in 170 countries and has more than 1,000 trademarks comprising – and including – the letters BT. Sometimes, BT gives permission for the use of its trademarks by third parties, and one of their licensees, D2 Communications Ltd, had the necessary permission. The director of Yes Talk is a former employee of D2 Communications, but didn’t have permission in his own right to use BT’s trademark. In this case, Nominet concluded that incorporating BT’s trademarks in the domain names arguably implied a connection between BT and Yes Talk – and there was little in the web pages at the domain names to counter that impression. The domain name, therefore, misrepresented the position in an attempt to unfairly attract business on the back of the complainant’s rights. Nominet’s decision was that the domain names should be directly transferred to the complainant.
The second case was between Barclays plc and Domain Governance Inc, and concerned the barclaybankonline.co.uk domain. In its ruling, Nominet found that the complainant has rights in the name “Barclays” from its long-trading history and various trademarks. Barclays is a regulated bank, and consumers looking for it may be diverted by the domain name. While it does not appear to be a phishing site, consumer’s diversion and confusion in this sector is particularly unwelcome. Nominet held that Domain Governance had no legitimate use for the name, and the sole purpose was to harvest traffic from the complainant’s reputation for financial gain. Again, Nominet decided that the domain name should be transferred to Barclays.
So, if you want to keep your shop window free of squatters, make sure your trademarks and domain names are well protected. The trademarks team at ip21 can advise on protecting and registering both, and can represent you if you need to evict a cyber squatter.
Written by Sarah Dacre (pictured)