Monday, 24 April 2006

Firms should reclaim domain names

companies will now find it easier to reclaim website names which include their title or trademark, thanks to a High Court ruling.

Tom Esler, who leads the Dispute Resolution Team, at Martin-Kaye Solicitors, in Euston Way, Telford, said the ruling was a great step forward.

“Previously many people thought if a website name was registered, even though it was not being used, there was little the trademark owner could do.

“But this new ruling will make it much easier for companies to take possession of a website name which has been registered by someone else, even if there is no evidence that anyone is trying to use it unlawfully.”

Tom said the judge had ruled that holding the domain name without a good reason meant the third party company possessed “an instrument of fraud”, and he insisted it be assigned to its lawful owner.

“The third party company had registered the domain name the same day that the new company had been formed, and so a large volume of emails, potentially confidential and sensitive, could have been received and read.”

He said usually companies who were concerned about domain names which could be confused with their firm initially took a cautious approach to the problem.

“It’s usual to write to the third party company and explain they shouldn’t use the website address as it would be breaching the trademark rules.

“Due to previous legal rulings, they cannot offer it to another business or try to sell it back to the company which owns the trademark, so the simple solution is for them to give it back, and many did just that.

“Now with the backing of this latest ruling, it will be possible to insist that they return the domain name to the rightful owner.

“This is a major step forward in ensuring that doing business in cyber space adheres to rules that would apply in a more general day-to-day setting.”

Tom said if any company was concerned that a website address containing their title or trademark was being used by someone else, they should seek legal advice.

“It’s important to ensure you follow the procedures correctly in order to protect the interests of your business.”