Your website is likely to play a key role in the marketing of your company or organisation, but how much thought has your business given to the choice of its domain name?

Issued on a first come, first served basis, a domain name is the name by which a firm is known on the internet. Normally this will be the company name but businesses should exercise caution as simply registering a domain name can amount to misrepresentation and give rise to a legal claim.

It has been widely established in UK courts that in some instances domain names can infringe trade marks. For example, if your business chooses to register a domain name identical to the trade mark of a competitor (i.e. someone providing identical goods or services) you will almost certainly be infringing its trade mark.

If your business decides to register a domain name that is either (1) similar to a competitor’s trade mark or (2) identical to a trade mark by a similar business you may also be infringing its trade mark. The test in this situation is whether the domain name is likely to cause public confusion. An example of this type of infringement was found in the case of Wasabi Frog Ltd v Miss Boo Ltd where a court ruled that a fashion website called Missboo.co.uk was infringing the trade mark ‘Missboohoo’ owned by another fashion site, Boohoo.com.

Businesses should also avoid registering domain names which include names of particularly strong brands, even where you provide different goods or service. For example in the case of Tesco Stores Limited v (1) Elogicom Limited a court found that the website tescodiet.co.uk was clearly an infringement of Tesco’s trade mark.

Trade marks are not the only legal consideration that businesses must be wary of when registering a domain name. Under the law of passing off, businesses can face a legal claim even where the name they wish to use is not a trade mark. This would be the case where the registration of that domain name would wrongly represent a connection between a business and another organisation who has built up goodwill using that name. For example in the case Phones 4u Limited v phone4u.co.uk Internet Limited a court found that the website phone4u.co.uk was clearly acting unlawfully by attempting to pass itself off as the popular phone store Phones 4u.

Businesses found to be infringing trade marks or passing off are likely to face sanction from the courts. These can include an injunction, payment of damages or even transferring the domain name to the complaining organisation.

In order to avoid claims businesses should always take steps to check the use of a name before registering it as a domain name. Practically, this can be as simple as carrying out a general internet search or perhaps checking the trade mark register online at www.ipo.gov.uk/tm/t-find/t-find-text/.

If you require any advice on this topic, please contact Nasima Ansary, at Clarkson Wright & Jakes Ltd on 01689 887887 or email at nasima.ansary@cwj.co.uk