Clarke Willmott

WARNING FOR BRAND MANAGERS TO AVOID ONLINE LEGAL MINEFIELD

Lessons to be learned after household brands fail in domain name ownership battle, according to Clarke Willmott

Retailers are being warned to take professional advice before entering into the legal minefield of trying to protect their brand names online.

The warning comes following a string of high-profile cases involving household names who failed to take ownership of website addresses – or domain names – which, they claimed, infringed their rights.

Ravi Mohindra, partner and intellectual property specialist at law firm Clarke Willmott, said these incidents highlighted the dangers brand managers faced when disputing the use of trade marks online without first doing their homework.

“Every year over 2000 cases involving the unauthorised use of brand names in domain names are brought before either the courts or under a domain name dispute resolution policy set up to deal with the majority of these cases, called the UDRP,” he said.

“Brand managers probably think they have automatic ownership of their trade marked brands, including anything online, but recent rulings have shown this may well not be the case.”

To illustrate this Mr Mohindra pointed to the recent ruling which went against Swedish car maker Volvo who had complained about a website trading under the name volvospares.com.

“Volvo claimed this was an infringement of their trade marks and said they wanted control over the domain name,” he said.

“However, the ruling went in favour of volvospares.com, saying that although the domain name was confusingly similar to Volvo‘s trade mark, the domain‘s owners had a legitimate business interest in using the name.”

Another case brought under the UDRP involved a website with the domain name raleighbikes.com.

The owners of the Raleigh trade mark had argued this was a clear infringement of their intellectual property rights, but again ICANN disagreed, ruling in favour of raleighbikes.com because its owner was using the name for a non-commercial forum site for fans of Raleigh bikes and had not registered the name in bad faith.

Finally, with Google UK now allowing advertisers to bid on brand keywords as part of its AdWords programme, brand owners are finding competitors using their trade marks and brand names online and disrupting their business.

“The lesson here is that it is crucial for brand owners to take professional advice and gather as much information as they can before embarking on a complaint,” said Mr Mohindra.

He added: “There‘s very little you can do about someone registering a domain name which incorporates your trade mark and, potentially, hurts your business. However, with the right advice and some time and effort spent preparing your case you can maximise your chances of getting a ruling in your favour.”

ENDS 8th April 2009

For further information please contact Louie Hadley, Sturgess Van Damme, on 01275 349011 or email louie@sturgessvandamme.co.uk