Technology &
Internet Law

Domain Names, Branding and Third Party Rights and Reputation

In this article we consider a common issue - when embarking on an ecommerce or Internet marketing project, acquiring a domain names and related branding issues.

Bricks and Mortar Reputation

Existing businesses will normally have their established brand from their "real world" activities but sometimes the more progressive projects look at things laterally and find an exciting new angle of their business and want a fresh look to the brand. In any event, the starting point is to decide on the domain name to be used for the site and, unless it is your existing business name, you should carry out a trade mark search in the United Kingdom to make sure you will not be infringing someone else's trademark. If your market is global then you may need to select key countries and conduct searches there as well.

Trademarks and Domain Names - Prior Use

If the trademark search is clear, that does not mean you are safe to use the domain name - if you are using a new name, you may find that another company is already using something similar which in turn could render your business liable to them in passing off. Many companies chose to check potential trading names existing on the "Business Names Register". Searches may be conducted on an intended trading name name to insure you against legal costs of defending claims by third parties in the UK if they clear the name.

Assuming the name is clear then you need to register the domain name itself. You may take a risk and register a name but not use it until it is clear, if you fear it may otherwise get taken before you get round to doing so. Beware: some companies on the Internet who allow you to search to see if a name is registered have unethical employees who sometimes watch the searches made and grab the name before you do - in fact, I believe there are even Net robots which spy on search facilities. Act quickly once you have found a name that does not infringe another company's rights.

Domain Names to Acquire

Whatever your target market and chosen name, at very least get the ".co.uk" and ".com" versions of the name. You should also consider hyphenated versions of the name as well as common misspellings. If you have key market around the world, also register it in each of the local domains - e.g. Australia: ".com.au". The idea behind this is to stop you losing traffic to your site (possibly to a competitor) and therefore losing potential business. In one case, we heard that a major site was losing 40% of the traffic to its site because they did not take the ".com".

The Passing Off Trap

There is another large caveat to simply choosing a name and commencing trading without checking carefully whether another own rights in the trading name or business name. Passing off is action that protects the reputation of business who carry on significant trading activity in the United Kingdom. There are no registers to search and one must rely on internet search engines, telephone books and other sources that reveal the existence of a well-known name or brand.

Where you are using your existing name or some initials, there is a danger that you will find the name has gone in some jurisdictions and you will have to live with that - you might like to consider buying the name if it is not being used or developed (by tracing the registrant) or alternatively, if they are not competitors (there is a good chance they will not be) you could enter into a mutual referral arrangement whereby visitors to their site who are looking for yours are then referred to your via a link and vice versa.

Maintaining Brand Purity and Insurance

Finally, be prepared to be tough in enforcing your rights. Take out legal expenses insurance to enable you to defend your brand so it does not become watered down. Companies often devalue their branded asset base by failing to take action, more often than not because it is expensive to do so. Insurance is a far cheaper option.

It is trite to say that naming and branding in the 21st century is an important issue. The right brand contributes to the reputation by remaining in your target market's minds longer than a news bulletin It is a matter to be taken seriously and dealt with some care to avoid the unwanted and unnecessary pitfalls of starting a new business venture.

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NEED TO KNOW MORE?

For further information on domain names, intellectual property, and information technology protection, contact Maitland Kalton.  Should you prefer to telephone, call us on +44 (0)207 278 1817.

Kaltons Solicitors, Suite 302, Spitfire Studios, 63-71 Collier Street, London, N1 9BE. Telephone +44 (0)20 7278 1817; Fax: +44 (0)207 278 1835.

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