We frequently hear of cases where a start-up company has registered a domain name only to find that a very similar name is already in use. The start-ups usually want to know if they can get away with using their new domain name. As with a lot of issues around intellectual property this is a bit of a grey area that depends on the exact circumstances. One thing that applies to all domain names though, is that just because you have registered a name does not mean you have the right to use it.
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Passing off
If you have bought a domain name and then find out someone else has a very similar name already registered you need to stop and do some research. There is a long established legal principle in the UK called “passing off”. Originally this applied to business names and trademarks but series of court cases involving domain names over the last twenty years have extended its use to domain names.
Passing off is the principle that business names are protected, even if they are not registered. So people cannot copy your business name, nor can they set up a business with a similar name if customers might be confused. To determine if passing off applies courts will normally look at whether one of the companies was already well established at the time of the conflict, whether the two businesses are operating in the same industry, in the same geographical area and targeting the same customers. As this is based on case law the exact ruling will vary based on the circumstances so, for instance, in one case the geographical area might not be relevant. In another case the colour of shop signs might be crucial. The basic principle is though, if a potential customer could easily confuse the businesses, the newer of the two will have to change its name. (To test this out the court might use the “moron in a hurry” standard).
Basically the same rules apply to domain names. If you have a domain name very similar to that owned by another business then you can be challenged for passing off. As with normal business names this will depend on whether you are in the same industry, whether you are in the same geographical area and whether customers are likely to be confused or misled. If you are judged to be “passing off” your business then you can be forced to change the domain name. This can potentially be a very expensive and disruptive process for web based businesses.
Protecting yourself from passing off
If you have accidently registered a domain name where there is a danger of a passing off challenge then you need to seek some specialist legal advice from an intellectual property specialist. The potential court case and impact on your business could be huge and needs to be avoided. If you cannot afford this kind of legal advice then a good first step to resolving the situation would be to get in touch with the other company and see whether they are going to be upset by your domain name. Of course the best way to avoid passing off claims is to do your research before you register a domain.
When you do a domain name search the results you see will be for the exact words or phrase you have typed in. It will not show you similar names. It is therefore a good idea to do a normal web search on your preferred domain name before buying it. When you do this make sure you go past the first page of results and have a really good look at different combinations of the words in your domain to re-assure yourself there are no competitors out there. Also make sure that when you buy a domain name you get all the different TLD combinations such as .com, .org, .net. This makes sure both that no-one else has an existing site with them, and that no-one can set up such a site in the future. You should also consider doing a company name search and a trademark search. This will ensure that no-one else has already established legal protection on the words in your domain name. If this is done properly then you should have no “passing off” problems.