UK: Domain Names And Trade Marks - Two Worlds Collide

Last Updated: 5 May 1997
In the brave new Internet world, the old business models are being cast aside to create the new electronic economy. Many have thought that the Internet is an unregulated wilderness, a sort of electronic wild west, where old laws do not exist and cannot be enforced. This is a myth, as events are starting to show. Over the past twelve months, many legal issues relating to the Internet have surfaced: pornography, libel, copyright, data protection and financial services regulation are all starting to impact on the evolving e-economy. Politicians and law enforcement officers, their concern often ignited by rather inflammatory reporting by the mass media, are struggling with applying established rules and regulations to the Internet.

One of the issues which has caused the most concern is who has the right to a domain name. Until recently, the first person to apply to register a name got it, but the commercialisation of the Internet has shown that this is not a sustainable policy. Many well known companies have found that their names and trade marks have been taken by others, for a variety of reasons:

  • McDonalds were able to get the name from a journalist who had registered it in return for a donation to a school of $3,500.
  • MTV sued an ex-employee, Adam Curry, to obtain the name They settled out of court.
  • In a landmark decision last month, Harrods successfully sued a Mr. Lawrie and his co-defendants who registered for passing off and trade mark infringement. The High Court awarded control of the domain name to the Knightsbridge store together with costs, saying the actions of the defendants "clearly constituted infringement of Harrod's registered trade marks and passing off".

So, why not simply allow the first applicant to have the name? Well, if the name is, say, "" or "" and the applicant has no connection with ICI, the chances are that ICI will want the domain name. When it finds out what has happened, ICI will demand that the registration is cancelled or transferred to it. Does ICI have the right to do this? Although there have not been any court cases in the UK on this point, the answer is probably yes, if the applicant is using the name for a site which carries on or promotes a business. Also, if the ISP does not cooperate in rectifying the situation, he is probably liable to ICI as well.

In short, a business with an established reputation (particularly if it is backed up by trade mark registrations) has legal rights in relation to domain names which are the same as its trading or product names. What really complicates things is that domain names are only addresses, they are not equivalent to trade marks or trading reputation. Each one is a unique locator. In contrast, a business reputation is much less well defined:

  • there may only be a reputation in one country or a group of countries: for instance, the HAG coffee trade mark is owned by two separate businesses in different parts of the world;
  • a business may only have the rights to a trade mark in relation to particular types of product: the Ladybird trade mark for books is owned by a publisher in the UK, for clothes by a retailer. The domain name could be claimed by United Airlines, United Parcel Service, United Utilities plc, United News and Media.
  • two businesses may have different names, but the same initials: can be claimed by the Australian Broadcasting Commission as well as the US television network

So, what can you do if there are conflicting claims for a domain name? You can't rely on your Internet service provider to sort it out. Internet service providers are getting caught up in disputes about who is entitled to a domain name, but they are simply not equipped to decide and their legal responsibilities and liabilities are very unclear.

You can't rely on the naming authorities either. Nominet is the UK authority and NSI is the US one. Under their terms and conditions, they both disclaim any liability for use of domain names. They also both stipulate that the applicant shall indemnify Nominet (or NSI) against any claim that a domain name infringes the rights of any other person. NSI has attempted to deal with the issue by creating an objection procedure, but this has been heavily criticised as superficial and inadequate. The International Ad Hoc Committee ( has been looking at this issue together with a number of others and has come up with two recommendations to help alleviate the problem. The first is to introduce a sixty day waiting period after publication of applications for domain names, to allow time for objections. The second is to create specific domains for trade marks with the suffix .tm. This would help with the first problem identified above, but not the other two.

So, you are left with legal remedies and here there may be an answer, at least where the other party is based in the UK. Under English law, you might be able to threaten to sue the infringer for passing off, or trade mark infringement if you have a registered trade mark. In addition, if the infringer is using your logo, designs, etc on his website you might also threaten to sue for copyright infringement. In the writer's experience, the possibility of litigation is usually sufficient to produce the desired result, but if not, then the courts are the only option. Sometimes the old world remedies are the most effective!

For further advice please contact us.

This newsletter is correct to the best of our knowledge and belief at the time of going to press. It is, however, written as a general guide, so it is recommended that specific professional advice is sought before any action is taken.

Garretts is authorised by the Law Society of England and Wales to carry on investment business.

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