Domain name and trademark
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Consequences of the misuse of somebody else's domain name
If you purchase a domain name that carries the name of somebody else’s business, you could be ordered to transfer it to the business owners. People might purchase a domain name that includes the name of another business for various reasons but they shall always be prepared to be ordered to forfeit the domain by WIPO. Misuse of a domain name might take different forms.
You can buy a domain name that includes another business name in order to either use it yourself in the future or simply because you did not realise that the domain name you have purchased includes a name of a business that already exists.
Some people buy a domain name that uses the name of another business, in order to use the domain name to attract internet users to a website. The website could be about a genuine product or service or it could be about another business, which you might want to criticise or review. Occasionally, you have people purchasing domain names with the name of a business they either worked for or had used its services. The prime reason for doing this is to criticise or defame that business. In this case, it is likely that your actions would be considered a misuse of a domain name.
In most cases it would be unlawful to use another business name to create a critical website. It is likely that the business whose name you used in the domain name will be able to successfully sue you for either breach of trademark or for defamation or for both. Inducing people to visit your website because they believe they are visiting the actual website of the company you are criticizing could be considered as passing off, or in other words, as an attempt to capitalise on another business’ good name to benefit yourself.
Driving people to your website is an action that is likely to benefit you, even if you don’t sell anything on that website but only use it to create a campaign or to criticise another business. The business does not need to have a registered trademark for you to commit to passing off. An unregistered trademark is as good in most cases for the business to establish the cause of action of passing off.
A recent example portraying the misuse of a domain name and where an order to transfer a domain name to the business whose name was part of the domain name was made, is the case of The Inter Continental Hotels Group (IHG).
In that case, a German man who gained control over 1,519 domain names was ordered by the World Intellectual Property Organisation (WIPO) to release them to a hotel chain. IHG brought the action after it discovered that domain names that corresponded with its brand were being used by Daniel Kirchhof to profit his internet hotel booking business by offering customers the opportunity to book rooms in hotels that were not connected to the IHG group.
IHG argued that by using its intellectual property, Mr Kirchhof was not only benefiting himself but that he was also promoting competitor hotels. The case confirmed two important issues. First, it is acceptable to bundle together more than one dispute against a single person and deal with the lot in one single case, and second, it was not acceptable for someone to simply use another company’s name in domain names that were intended to benefit them financially.
WIPO, is the World Intellectual Property Organization and among the services WIPO provides is a dispute resolution service for challenges filed by trademark owners in relation to abusive registration and use of internet domain names, commonly known as cybersquatting. This entire procedure is conducted online and results in enforceable decisions within two months. It is probably the cheapest and quickest method to have domain names transferred back to the business owners who own the trademark to them.
Often, WIPO will order the transfer of a domain if the owner is able to show that the name is identical or confusingly similar to terms the owner has rights to, the person who owns it has no rights to the domain name, and the name was registered and is being used in bad faith. If you are aware of a third party misusing your trademark by attempting to attract internet users to promote goods and services competitive with yours, or to defame your business, you might be able to stop them from doing so by asking the WIPO for an appropriate ruling by declaring that there has been a misuse of a domain name which warrants a domain name transfer.