It is easy and inexpensive to register company names and domain names that are available. This represents both an opportunity and risk.
Domain name registrars and resellers do not check third party rights and do not require domain name registrants to prove that they have the rights in any domain names they wish to acquire.
Similarly, Companies House does not require registrants to show rights in the names that they wish to register. The registrar can reject name applications which are the same as, or too similar to, an existing company name. However, only minor differences are necessary to avoid this form of rejection.
This can lead to opportunistic company name registrations and bad faith domain name registrations, where unconnected entities register companies and domains using third party names, brands and trade marks. While clients typically register company names and domain names themselves, we are able to assist with the enforcement of such rights where infringement is identified (whether acting for claimant or defendant) and can provide solutions for overcoming conflicting registrations.
Monitoring and search services can be put in place to identify third party registrations of identical or similar company names or domain names and, where a third-party company name or domain name is identified, we are able to advise on a number of options:
- Making a direct or anonymous (through private investigation companies) approach to acquire the company name or domain name
- Sending formal legal letters requesting that the company name or domain name is transferred (alleging infringement of trade marks, bad faith domain name registration and opportunistic company name registration where relevant)
- Pursuing a formal complaint through the Company Names Tribunal seeking that the tribunal rejects a company name because it is the same as, or too similar to, an existing company name
- Pursuing a formal domain name complaint, for example under the Uniform Domain Name Dispute Resolution Policy (UDRP) through WIPO
- Making take-down requests via website operators and hosts where domain names are live with a website which also infringes intellectual property rights
We can assist with all stages and are experienced in bringing and defending company name disputes before the Company Names Tribunal and domain name disputes under the UDRP.
Company name and domain name complaints can form a vital part of broader infringement proceedings. They are generally faster and much cheaper processes than court proceedings and a successful decision can provide the remedy that a client needs, meaning that they are an extremely useful tool to have at a client’s disposal.
