In the early stages of the internet domain names were used as a way to locate specific computers on the internet often referred to as ‘signposting’. However, with the expansion and commercialisation of the internet, domain names have begun to appear in the ‘real world’. They can appear on television adverts, billboards, magazines and have become integral business identifiers. As the real and digital spaces begin to overlap, intellectual property issues begin to arise.
There are two elements of domain names which have accelerated the digital/real world conflict. Firstly, domain names are very specific, only a certain combination of words can link to a particular site and secondly, consumers/members of the public have a tendency to guess at domain names and so intuitive domain names have become valuable to companies and organisations.
An example of intuitive domain names can be seen in the recent issue the England and Wales Cricket Board (“ECB”) have raised after being alerted to the attempted registration of ‘Cricket Association of England’ as a domain name. In this case, the correct domain name for the ECB is ‘www.ecb.co.uk’, however, an unknowing member of the public could reasonably guess that to find information about cricket in England they could search for the ‘Cricket Association of England’.
What protection or action can be sought against these intuitive domain names?
The traditional approach would be to pursue a claim in passing off. A claimant can bring proceedings in respect of a domain name if one has been registered which, obviously refers to and identifies a particular entity in a bid to ‘hijack’ the name. In the past, Judges have been wary to accept that domain name registration can constitute passing off, but in the case of British Telecommunications Plc and others v One in a Million Ltd and others it was found that passing off could subsist in domain name registration.
Therefore the domain name is registered in a bid to deceive a proportion of the public then a claim for passing off is a viable option. This could be a route of action for the ECB.
However, there is a less well known remedy for the ECB. This comes from the World Intellectual Property Organization (“WIPO”), which has offered arbitration and mediation services for domain name disputes since 1994. With fees ranging from USD1500 to USD5000 the WIPO route is an attractively priced alternative to the UK courts.
One example from the WIPO of particular interest was between the Canadian Hockey Association of Calgary and a respondent who had registered the domain name ‘hockeycanada.com’. Of the possible remedies offered by the WIPO; cancellation of domain names; transfer of domains; and costs allocation, it was decided that the domain name should be transferred to the Canadian Hockey Association of Calgary, a good sign for the ECB.
This case serves as a good warning for other companies and sports associations, although they may have protection for their own specific domain names, in the age of Google and predictive searches some thought should be given to intuitive domain names and the issues that can arise.
The best course of action is generally prevention, companies and associations should be encouraged to;
- register domain names featuring common misspellings,
- consolidate domains into one company to simplify the renewal process;
- register intuitive domain names which link through to the core domain,
- actively monitor key words in domain names; and
- register domain names as trademarks.