FAQ: What is the relationship between domain names and trade marks / passing off?
People often confuse the relationship between a domain name and a trade mark (Note that “trademark” is the US spelling!).
With most domain name arbitration schemes, the first thing you have to prove is that you have trade mark rights in a name which is identical or confusingly similar to the domain name. The domain name suffix is disregarded. For example, we have registered the word ADLEX as a trade mark. This would be regarded as identical to the domain name adlex.com. And confusingly similar to say adlexsolicitors.com. (That’s not to say that we would automatically win the case, just that we’ve reached first base!)
Let’s say we hadn’t got around to registering ADLEX as a trade mark. We can still rely on the fact that we have been providing legal services under that name for some years such that it has acquired a certain reputation and goodwill. That would give us a separate legal right, known as “passing off” which we could invoke in court. If say a competing law firm registered adlexsolicitors.com and diverted it to their own site at xyzsolicitors.com, we could go to court and argue that the other firm was passing itself off as us, i.e. in the same way as if they opened an office next door to us and put up a sign saying “Adlex Solicitors”. Passing off can protect names that have acquired reputation / goodwill through use, even if not registered as trade marks.
We could also base our domain dispute arbitration case on that same right, namely ADLEX having become an unregistered trade mark (also known as common law rights) which would be enforceable under the law of passing off. This unregistered right would suffice in some domain dispute schemes such as the UDRP (for gTLD domains such as .com) and in Nominet’s DRS for .uk domains. That said, we would need to be careful to submit sufficiently detailed evidence of reputation / goodwill in support of our claim to unregistered rights as many complaints fail for that reason.
Having either registered trade marks or rights enforceable under the law of passing off is a likely to be a pre-requisite to undertaking domain dispute arbitration as well as (in the UK at least) legal proceedings.
A separate issue is whether internet domain names themselves (e.g. ADLEXSOLICITORS.CO.UK) are registrable as a trade marks. In the UK the answer is “yes”. But we would have to show that the domain name is not merely functioning as an address enabling people to communicate with us – like a postal address or telephone number. Rather we would have to show that, as with say “Amazon.com”, the domain name has become distinctive as a “badge of origin” i.e., a source of particular goods or services.