5 tips domain name disputes
Here are 5 tips domain name disputes.
1. 5 tips domain name disputes – Starting point – Generally, a holder of a domain name and the holder of a trade mark to that name can have equal entitlement (except when the brand name is so established that a domain is no longer just an address).
2. 5 tips domain name disputes – Is ICANN effective? – There are questions about ICANNs effectiveness. The problems generated by misregistration continue to escalate. The extent to which the registration system has become abused is arguably reflected by the practice of “reverse name hijacking”. This where the complainant is keen to obtain the respondents name for its own use. ICANN dispute policy continues to expand to keep up.
3.5 tips domain name disputes – Not just registered marks – The dispute policy is not just limited to considering names using registered marks. Names that have not been registered may also be considered, where it would be in breach of the legal rights of a third party to register or use them.
4. 5 tips domain name disputes – WIPO – WIPO has tried to address abuse since 1998. Most notably in the first and second report of the Internet domain name process. The management of Internet names and addresses: Intellectual property issues – final report WIPO publication no. 439 and WIPO Publication No. 843. The WIPO arbitration and mediation centre tries to provide trademark owners with a mechanism with which to deal with bad faith registrations. An update on the activities of WIPO can be found at the WIPO website.
5. 5 tips domain name disputes – The relationship between domain name and trade mark – The important thing to remember in the relationship between domain names and trademarks is that a domain is not associated with the underlying goods and services in the same way as a mark, so it does not cause confusion in the mind of customers in the same way. If another organization tried to use a domain name similar to your trade mark, to confuse your customers into buying its products or service because they associated it with your stronger brand, it is certainly possible that the customers would log on to the rival Web site, but since they access the site (assuming your trade mark itself was not infringed in its contents), they would no longer be confused as to what it offered. One of the ways to avoid risk of another entity using a name that is very similar to your own trade mark is to register the name effectively as a mark.
The best protection is to register the name as a mark.
Remember it is best practice to show use of the name.
Err on the side of protective registrations.