Why domain is name of the game

Published on Sunday 5 October 2008 20:58

A MAN from Edinburgh recently found himself on the wrong end of a decision by the World Intellectual Property Organisation (Wipo) over his purchase of the domain name narnia.mobi.

The fact that the case arose serves as a stark reminder to trademark holders in general, and businesses in particular, of the importance of domain-name registration in this electronic age.

Any trademark holders caught napping when it comes to registration of such important intellectual property may find they wake up to a problem that is potentially tricky and expensive to deal with.

The man claimed he purchased the domain name as a birthday gift for his son to use as an e-mail address. The company that owns the rights to CS Lewis' work, and trademarks for the term "Narnia", complained to Wipo and it found that using the Narnia trademark for e-mail did not give the purchaser a legitimate interest in the domain name. In addition, it said that if a domain is registered and nothing is done with it, and it is not possible to conceive of any plausible or legitimate use for it, that can, in itself, amount to bad faith. The transfer of the domain name was ordered.

The case should remind trademark holders to protect against cybersquatting – when a domain name is registered in bad faith to gain some form of commercial advantage. This can involve the domain name holder:

&#149 Trying to sell the domain name for an inflated price.

&#149 Using the domain name to direct traffic to their own site.

Even Hollywood stars realise the importance of registration. Angelina Jolie's representatives are thought to have registered numerous sites connected to the names of her biological children, within hours of their births.

Going down the traditional intellectual property infringement avenues of passing-off claims, trademark infringement, and abuse of goodwill can lead to positive outcomes for businesses, but these can be cumbersome and expensive.

Within reason, businesses should think about all the domain names they could possibly want, work out whether they have the rights to them, and, if not, how they can register the names. Domain names that are still available can be acquired very cheaply, but where domain names are held by third parties there are variations on essentially three options:

&#149 Note the expiry date for the registration and if it is not renewed in time, swoop in and buy it.

&#149 Approach the owner and see if they will transfer it.

&#149 If there is an infringement of intellectual property rights, take legal action if the owner does not agree to transfer the name. But, bear in mind the cost of even successful legal action. Common sense may justify agreeing a modest payment to resolve the issue without litigation.

Something else frequently forgotten is that acquiring a domain name is not the end of the matter. There are ongoing management and maintenance issues. If domains are not properly maintained their registration can lapse.

This can leave the door open for exposure to what is known as "porn napping" – when pornographers register a domain name a business has forgotten to renew and forward traffic from it to a porn site.

To go full circle, individuals registering domain names should take note. If they acquire a domain name that uses someone else's trademark or other intellectual property, they had better beware.

Unless a legitimate purpose can be established, they could find themselves waking up in a costly, hassle-filled world that has more in common with Mordor than Narnia.

&#149 Pamela Abbott is a solicitor with CCW Business Lawyers