FAQ: What is the relationship between a domain name and a registered / unregistered trade mark?

People often confuse the relationship between a domain name and a trade mark (Note that "trademark" is the US spelling!).

With most domain name arbitration schemes the first thing you have to prove is that you have trade mark rights in a name which is identical or confusingly similar to the domain name. The domain name suffix is disregarded. For example, we have registered the word ADLEX as a trade mark. This would be regarded as identical to the domain name adlex.com. And confusingly similar to say adlexsolicitors.com. (That's not to say that we'll win the case, just that we've reached first base!)

Let's say we hadn't got around to registering ADLEX as a trade mark. We can still rely on the fact that we have been providing legal services under that name for some years such that it has acquired a certain reputation and goodwill. We would then base our domain dispute arbitration case on ADLEX having become an unregistered trade mark (also known as common law rights). This would suffice in some domain dispute schemes such as the ICANN Uniform Dispute Resolution Policy or UDRP (for gTLD domains such as .com) and in Nominet's DRS for .uk domains. That said, we would need to be careful to submit sufficiently detailed evidence of reputation / goodwill in support of our claim to an unregistered trade mark as many complaints fail for that reason.

Alternatively, we might decide not to use a dispute resolution service but instead to go to court. If say another law firm registered adlexsolicitors.com and diverted it to their own site at xyzsolicitors.com, we would argue that the other firm is infringing our registered trade mark ie they are using a mark similar to ADLEX for the supply of legal services - just as if they opened an office next door to us and put up a sign saying "Adlex Solicitors". If we didn't own a registered trade mark, then we could still sue and invoke the UK legal cause of action known as passing off which can protect names that have acquired reputation / goodwill through use.

So having registered or unregistered trade marks is a likely to be a pre-requisite to undertaking domain dispute arbitration as well as (in the UK at least) legal proceedings.

A separate issue is whether an internet domain names themselves (e.g. ADLEXSOLICITORS.CO.UK) are registrable as a trade marks. In the UK the answer is "yes". But we would have to show that the domain name is not merely functioning as an address enabling people to communicate with us - like a postal address or telephone number. Rather we would have to show that, as with say "Amazon.com", the domain name has become distinctive as a "badge of origin" ie a source of particular goods or services.

How Adlex Solicitors can you help you with domain name trade mark legal issues...

... for a free initial chat and more information, contact Adam Taylor on +44 (0) 207 317 8404 or email.

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