Categories
Intellectual Property

The Law Surrounding Domain Names-What You Ought to Know

domain-name-law

Domain name disputes are becoming an increasing problem for business with the proliferation of website, eCommerce and new businesses going online and trading on the internet.

And infringements occur regularly in the shape of trade mark disputes, cybersquatting and related issues.

It is crucial for any business to have a smart commercial strategy regarding their trade marks and domain names.

Domain names can usually be registered quickly and inexpensively. Top Level Domain(TLD) is the suffix such as ie or uk or fr-it denotes the country.

Within TLDs there are 2 sub-categories

1. Generic TLDs (gTLD) such as .com,.net,.org,.biz. These domain names do not have to be distinctive and do not indicate geographic origin.

2. Country Code TLDs (ccTLD) which are administered by the domain registry of the relevant country; in Ireland this is IE Domain Registry ltd (www.iedr.ir).

In Ireland you must display a real and substantive connection with Ireland when applying for a domain name before iedr will approve your application. You may also need to show a connection with the business that you are referring to in your domain name application.(Check out IEDR.ie)

Domain name disputes

Domain name disputes have been resolved generally in one of 2 ways-either in court or by reference to the alternative dispute resolution procedure provided by ICANN.

This body has adopted the UDRP (Uniform Domain Name Dispute Resolution Policy) which apples to generic TLD name disputes.

Some country code administrators have incorporated this procedure into their registration agreements.

This UDRP procedure has been very successful and has resolved many domain name disputes; however it does not provide for damages and so a company that needs immediate injunctive relief and damages will be advised to head for court rather than the UDRP procedure.

Generally the relief provided is simply to have the domain name transferred to the plaintiff.

To win relief at the UDRP you will need to show 3 things

1. the complainant must show that the name is confusingly similar to the name in which the complainant has rights
2. the existing holder has no legitimate interest or rights in the domain name
3. the complainant must show bad faith on the part of the holder of the domain name.

The holder of the domain name can reject the complainant’s case if he could show bona fide use of the name, non commercial use with no intention to profit, evidence that the respondent is known by the domain name.

UDRP also recognise the phenomenon of ‘Reverse Domain Name Hijacking’ which is the occasion when the plaintiff uses the policy in bad faith in an attempt to deprive a registered holder of a domain name of that name.

In ccTLD disputes the domain name registry require further proofs before they cancel or transfer a domain name.

They would need to see some aspect of passing off or trade mark infringement also.

These disputes can be litigated before the appropriate courts as occurred in Jan. 2009 when Sean Dunne, Property Developer went to court in a dispute to obtain D4Hotels.com from John Brennan who had registered the domain name in his own name whilst running D4 hotels group in Ballsbridge.

The IEDR introduced a dispute resolution procedure in 2003 in respect of .ie disputes which you can learn more about on their website.

Conclusion

It is clearly impossible to register all domain names and trade marks which they may feel they need to protect their intellectual property.

Sometimes it is more cost effective to purchase the name from the ‘offender’ rather than go to court or UDRP.

It is important to recognise the difference between trade marks and domain names and it is prudent for a company to register each of their domain names as a trade mark.

Because otherwise their domain name could be registered as a trade mark by a 3rd party.

Learn more about doing business in Ireland.

Categories
Intellectual Property

Passing Off,Counterfeit Goods, and Confidential Information-Are You a Victim of These Economic Torts?

counterfeit-goods

Passing off, counterfeit goods, and distributing confidential information can all cost the small business owner significant amounts of money.

These are economic torts (civil wrongs). But what exactly is involved and what can be done if you are a victim?

Passing off generally involves the making of a misrepresentation and the meaning or definition of passing off is as follows-

What is passing off?

There are 5 characteristics of passing off:

  1. A misrepresentation
  2. Made by a trader in the course of trade
  3. To prospective customers
  4. Which is calculated to injure the business or goodwill of another trader
  5. Which causes actual damage to a business or goodwill of the trader

1. Misrepresentation

There must be a false representation by the defendant so that an association with the plaintiff is made in the minds of the public.

2. Made by a trader in the course of trade

The misrepresentation must be made in the course of trade. What is considered to be a trader as far as the law of passing off is concerned is very wide-it has been held to include the BBC for example.

Anyone who makes an income from the provision of goods/services is a trader.

3. To Prospective customers

For passing off to occur, the misrepresentation must be made to prospective customers.

Then the courts have held that they will decide whether the general public is likely to be deceived.

4. Business/Goodwill

It has been accepted that goodwill can be created in different ways and is not confined to simply trading within a jurisdiction.

5. Damage

The plaintiff must prove that the action of the defendant has or is likely to cause damage to the plaintiff in order to prove passing off.

Passing off is closely connected with counterfeit goods.

Counterfeit goods

A trade mark owner can register his trade mark with the Revenue Commissioners and customs officials can destroy goods, which have been abandoned without or before determining whether an intellectual property right has been infringed.

Each consignment of goods from outside the EU will be inspected to see whether the goods are genuine.

If they are found to be counterfeit, the customs authorities will destroy the consignment.

Infringement

Exceptions

A trade mark is not infringed by the use of a person of his own name or address, provided it is done honestly.

A trade mark will not be infringed by its use on goods which have been put on the market in the EU by the owner of the trade mark or with his consent. This is known as Exhaustion of Rights of a registered trade mark and stems from EU law.

Remedies

Courts have the power to grant an injunction and/or the destruction of goods and damages. The District court has the power to request the Garda Siochana to seize goods and ultimately to have them destroyed once satisfied that an infringement has taken place.

Domain Names

A domain name will not necessarily become a trade mark and it is advisable for the owner of a domain name to also register it as a trade mark.

Confidential Information

Information such as know how, secret formulae, processes, customer lists are clearly of huge importance to businesses.

The protection of this information can be best protected by a confidentiality agreement with an employee from an employer’s perspective. This can be more effective than registering patents as this involves putting information into the public domain.

Once it is established that an obligation of confidentiality then the person to whom it is given has the duty to act in good faith and only use the information for the purpose for which it was intended.

Generally the law imposes a duty of confidentiality in 2 situations

  • The protection of trade secrets/confidential information in non-employment cases
  • The protection of trade secrets in the course of employment

Once a contract of employment has ended and the employee has left his position he is still under a duty of confidentiality.

It has traditionally been held that in an employment situation will lead to 3 types of information

  • Public information-not protected
  • Skill and experience which is not protected although it could be the subject of a restriction of trade clause in the employment
  • Trade secrets-protected and can only be used for the benefit of that employer

Remedies

Breach of confidential information will lead to an injunction or legal action seeking damages or an account of profits or all 3.

Learn more about small business law in Ireland.