Domain name and trade mark conflicts

If you own a registered trade mark, you are not automatically entitled to use that mark as a domain name.

This is because it is possible to register the same trade mark:

• for different classes of goods or services
• by different proprietors
• in different territories

Domain names, on the other hand, are global and have to be unique. Registration is on a first come first serve basis, putting pressure on businesses to be the first to register.

Types of domain name disputes

The most common types of domain name disputes arise when you find out that:

• someone has registered a domain name of your choice before you have attempted to register it
• you have registered a domain comprised of a name that is already in use as a registered trade mark, and the trade mark owner objects
• a business of similar or same name as yours is challenging your entitlement to the domain
• someone is cybersquatting your chosen domain, ie has registered it in bad faith to gain commercial advantage
• someone has created a gripe website, also known as a 'sucks' website, involving a domain devised in bad faith or devoted to mockery or critique of a person, place or business

Legal remedies for domain name disputes

Your options for resolving disputes may include:

• cease and desist letters to registrants
• Nominet UK's dispute resolution service - for resolving .uk domain name disputes
• WIPO's Uniform Dispute for Domain Names Resolution Policy - for disputes over generic top level domains
• defending trade marks against infringement - if someone is misusing your trade mark rights
• court action

If you feel that someone has registered a trade mark or a domain name unlawfully or in bad faith, you should take legal advice before contesting the registration. Find a chartered trade mark attorney near you.