FAQ: What is the relationship between domain names and trade marks / passing off?
People often confuse the relationship between a domain name and a trade mark. (Note that “trademark” is the US spelling!) Hopefully the following will help you untangle the two!
Registering domain names as trade marks
A separate issue is whether 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” i.e., a source of particular goods or services.
Registered trade marks in domain name arbitration
With most domain name arbitration schemes, the first thing you have to prove is that you have trade mark rights in a name. And that that name is identical or confusingly similar to the domain name. The domain name suffix is disregarded. For example, we own a trade mark for “ADLEX”. This trade mark is identical to the domain name adlex.com. And confusingly similar to say adlexsolicitors.com. That’s not to say that we would automatically win the case. Just that we’ve reached first base!
Unregistered trade marks
Let’s say we hadn’t got around to registering “ADLEX” as a trade mark. Still, we’ve been supplying legal services under that name for quite a few years. That gives us a separate legal right, known as “passing off”, which we can invoke in court. Let’s say a competing law firm registered adlexsolicitors.com and diverted it to their own site at xyzsolicitors.com. We could go to court and argue that the other firm was passing itself off as us. In the same way as if they opened an office next door to us and put up a sign saying “Adlex Solicitors”. So passing off can protect names that have acquired reputation / goodwill through use, even if not registered as trade marks.
We could also base our domain dispute arbitration case on that same right. We would say that “ADLEX” is an unregistered trade mark (also known as common law rights) enforceable under the law of passing off. Most domain name dispute schemes recognise such unregistered rights. For example, the UDRP for “gTLD” domains such as .com). And Nominet’s DRS for .uk domains. However, we would still need to be careful to submit sufficiently detailed supporting evidence of reputation / goodwill. As many complaints fail for this reason.