Domain Names and Trademark Infringement

Updated: Jul 11, 2020

Domain names are often used like trade mark to identify the ‘home’ of its user on the internet. They are often unique to the person who registered them. This helps to minimise confusion in identifying entities on the internet. However, unlike trade mark, domain names are largely unregulated. This has widened the scope of abuse of use of domain names. The court has been willing to intervene in maintaining order in the use of domain names. Where there has been a case involving registered trademarks or well-known names used in an abusive manner, the courts have responded by bringing in order through either trade mark regime or passing off.

In case of passing off, it would amount to infringement to use a domain name that is identical or likely to cause confusion with a registered trade mark. A passing off, the action lies to protect the goodwill of the owner, when the defendant makes a misrepresentation calculated to deceive the public into believing that the good of the defendant is that of the goodwill owner and thereby cause damage.

In British Telecommunications plc v One in a Million Ltd and others[1] the defendants have speculatively registered a large number of domain names or trademarks belonging to well know companies. The defendants were not using the domain names themselves but registered them in the hope of selling them to the companies to whom the names or trademarks belongs or to other interested person with a view to making profit. Among the companies in respect of whom the domain names were registered was Marks and Spencer. The companies brought an action for trade mark infringement and passing off. The court upheld the case for passing off against defendant as the defendant had equipped himself with or intended to equip another with an instrument of fraud.”[2] In registering the domain names, the defendants had made a false representation that they were connected with the companies whose name they used to register the domain names. With respect to the trade mark, the court held that the domain names were registered in order to take advantage of the distinctive character of the mark which was held unfair

[1] [1999] FSR 1 [2] Id. p. 2

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