A new scam has emerged directed at owners of domain names in the
UK. Previously, individuals posing as domain name registrars in
Asia have tried to deceive the owners of trade marks and of domain
names into buying a series of domain names with suffixes such as
.com.cn and .asia. The bogus registrar purports to have had
instructions to register the victim's name.
In a new departure, the initial approach is made by telephone
rather than by email. This is of concern since a victim has time to
read and absorb the information being given in an e-mail, and can
readily forward the email to IP advisors if concerned. When taking
a phone call, there is less time to establish that the call is
fraudulent. Contacted by phone, domain name owners may be more
likely to believe that they are under threat and to agree to
purchase a similar domain name registration in these
In a call to our office, the caller claimed to be a domain name
registrar who had been contacted by a third party interested in a
domain name similar to that owned by the person or company
called. She went on to claim that the third party
was in the process of applying for both a .com and a .co.uk domain
name very similar to this firm's, and that she was obliged to
inform this company as it was a "trading name". When
questioned, the caller said, falsely, that there had been a change
in the rules governing domain name sales. Superficially she was
Our investigations show that this scam is relatively new to the
UK, with Internet discussions concerning the modus
operandi dating back only to November 2011. We advise, as do
Patent and Trade Mark Offices worldwide, that rights owners should
be extremely wary of any unsolicited invoices and or requests
received from unknown third parties to pay money for domain name
registration. Given that fraudulent approaches are now being
made by telephone, rights owners must be even more careful.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Assos v Asos is a good example of how two apparently very similar trade marks can be held to co-exist side by side despite appearing to inhabit similar territory, and how it can be dangerous to adopt too simplistic a view of infringement and passing off. It is not enough to simply say "the marks are similar and what they are being used for is similar –therefore there must always be infringement".
In October the Court of Appeal ruled against Cadbury in relation to its registration as a trade mark of the distinctive colour purple which consumers associate with its chocolate products, ruling that its distinctive colour was not a "sign" capable of being represented graphically and was not therefore registrable as a trade mark.
The Chancery Division has recently handed down an order in ITV v TV Catchup Ltd which prohibits the defendant, TV Catchup Ltd, from streaming certain free-to-air tv channels via its online service at www.tvcatchup.com.
Lord Younger, Intellectual Property Minister, recently announced the setting up of a new police unit which will be aimed at tackling online piracy.
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