Intellectual property in websites & domain names
- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
Websites and domains are a major feature for most businesses. People will try and copy. Preventing unauthorised use is complex but we have the specialist knowledge you will need. We help prevent damage to your business.
Our website and domain name service includes but is not limited to:
Preventing infringement of a website
Scraping information from a website is an infringement of intellectual property. Such information could include:
- Online databases e.g. an estate agent’s listing;
- Lifting information collated and curated by the website owner.
Website infringement and damage
The potential damage is enormous. We tell you the quick, decisive steps to take. This may mean we obtain an injunction. An injunction prohibits the infringer using the website’s information, pending a full trial. It may also require the infringer to temporarily cease trading.
Copyright law protects any creative work including your website. In the UK there is no legal requirement for copyright to be registered. However, Obtaining copyright protection is simple. The work must be original and recorded in writing or otherwise. Websites usually comprise:
- Text / Literature;
- Designs / Graphics / Images;
- Website Layout;
Domain name protection
The Uniform Rapid Suspension System (URS) and Uniform Domain Dispute Resolution Policy (UDRP) enables a trade mark owner to bring a claim that temporarily suspends or transfers a domain name. It is a method of trademark protection.
The Uniform Rapid Suspension System & Uniform Domain Dispute Resolution Policy
The following two processes enable you to either suspend or transfer the disputed domain. The:
- URS offers a quick remedy if you own a registered trade mark, and discover you are the victim of cybersquatting.
- UDRP can transfer a domain name to the registered trademark owner. This is a means of trademark protection.
Trade mark relationship with website and domain names
The URS requires the trade mark owner to demonstrate the disputed domain:
- Is identical or confusingly similar to a trade mark;
- Owner has no legitimate interest in the disputed domain; and
- Was registered in bad faith.
The UDRP has a similar test. However, the UDRP test applies to any trade mark, and is not restricted to an identical or confusingly similar trademark.
Domain name valuation
However, there is no legal remedy if your desired domain name was already registered before you register the domain name. Your only option is to purchase the domain.
There are no rules. A domain name’s valuation is determined by the buyer and seller. Your valuation could depend on:
- The seller’s profile;
- Domain usage;
- Ownership term;
- Ownership history; and
The law has now been clarified. Registering a copy cat domain name, i.e. a name similar to a competitor’s, is an infringement of IP. This is passing off, which is a well-established illegal act.
Passing off is the term for taking advantage of the goodwill, brand, reputation of another business. It gives rise to a damages claim.
Remedies for passing off
So, if someone registers a domain name that infringes your trade mark, in a way that confuses the general public, then remedies under a passing off action include:
- Interim injunctions.
- Search and seizure orders.
- Account of profits.
- Delivery up or destruction of the domain names.
How to prevent passing off
- File a complaint with the Internet Corporation for Assigned Names & Numbers (‘ICANN’). ICANN is a non profit organisation responsible for IP address allocation and domain system management.
- Make a claim at the Intellectual Property and Enterprise Court (“IPEC”) for infringement of the domain name.
Defending allegations of abuse or passing off
You may face IP infringement claims if:
- You register a domain name likely to confuse the public; and
- The domain name could potentially damage another company’s goodwill.
We recommend you review competitors’ domain names before registering your domain name.
Relationship of passing off with the common law
Under UK intellectual property law, the domain name registration can be a misrepresentation to the public. The person who registers the infringing domain name:
- Could be misrepresenting their association with the name’s goodwill;
- Can be liable for passing off.
The passing off occurs when the domain name appears on the public Whois register. The court does not look into planned use arguments.
Reviewing and drafting agreements
The intellectual property attaching to your website and domain name usually requires protection via the agreements you enter into. We can review or draft these agreements. For example:
- Agreements with your web designers and SEO experts – Many businesses use external experts or agencies to improve a website’s effectiveness. If best practice is not applied the loss of revenue if the website is suspended can be substantial. Your agreements need review and consideration to cut down on risk.
- E-commerce – If you are selling goods on your website you do need to display your e-commerce terms and conditions. We have the experience to analyse the issues you are likely to encounter and provide solutions before the issues with customers emerge.
Our website and domain name service track record
We enable clients to exploit and protect their websites IP. The field is fast moving. We are practical IP internet specialists. We keep up-to-date. We tell you what can be done cost-effectively. Most likely, we have already resolved an issue similar to yours. Our track record includes:
- Black hat SEO – Action against a coffee distribution company’s marketing agency who used “black hat” SEO techniques. The agency breached our client’s agreement and instructions. Black hat SEO aims to raise a page’s position in a search engine’s results page. It uses techniques that violate the search engines’ terms of service. Search engine providers are increasingly skilled at spotting “black hat” techniques, and when discovered, often downgrade the website.
- Social media comments – Interim injunction for a recruitment company. A group of employees were publishing detrimental and derogatory comments on social media platforms about the company’s senior managers.
- Cybersquatting – Winding-up cybersquatting company and disqualification of directors. Following a substantial investigation, we went behind the company’s corporate veil and took action against the individual directors. We proved the cybersquatting company had been set up for the purposes of a sham or facade.
- Domain name – Acquisition of a domain name for a property investment company. This increased the business’s profile and expanded its target market. We also advised on database protection for the property investment portfolio.
We stay current with your business needs. This ensures we are available to advise on intellectual property issues related to website and the internet. The relevant law is developing. Increasingly courts see domain names as enforceable intellectual property rights. When your business or its reputation is diminished through internet infringement you are not alone. We tell you how to limit the damage.