Practice group articles

Fines for breaches of the Data Protection principles | Coming soon
6 January 2010

Co-Writer of 1960s hit wins share of royalties
11 August 2009

Budget 2009 summary for corporate clients
22 April 2009

Expansion of privacy rights by the European Court
17 February 2009

Defamation on the web
1 November 2007

Ownership at work: intellectual property
2 September 2007

Cybersquatters: protecting your IP assets

01 May 2008



The internet is becoming an increasingly important tool for all businesses, and consequently the registration of domain names is a highly relevant concern.

A registered domain name is a name that identifies a computer or computers on the internet by way of a numeric IP address. One or a number of domain names can direct customers to a website address which is often used as an advertising tool and as a means of selling products to consumers. Likewise, metatags which are not visible but are part of the software which makes up a webpage (as opposed to a domain name which may show in a Uniform Resource Locator "URL") provide keywords in directing customers to a website of a business, and are particularly useful when consumers use search engines such as Google.

A common problem for businesses arising in the age of the internet is the registration by competitors of domain names identical or similar to their trade names. Bodies such as Nominet who are responsible for administering United Kingdom domain names operate on a first come, first served basis. Opportunistic individuals, therefore, are able to register the name of a business and attempt to use it to their advantage by directing customers toward their own website. This practice is referred to as "cybersquatting".

Figures recently released from the World Intellectual Property Organisation (WIPO) show instances of cybersquatting have increased by 50% in only 2 years and that the problem is continuing to grow, with 2,156 complaints of cybersquatting being heard by Nominet in 2007 (an increase of 18% from 2006 and 48% from 2005).

The greatest numbers of actions to reclaim domain names held by alleged squatters were in the pharmaceutical, biotechnology, banking, finance and IT sectors. Some of the disputes heard in 2007 centred on famous people, organisations and events in the news; for example Facebook; MySpace; the 2010 World Cup and The Prince's Trust.

The High Court has also been involved in determining domain name disputes and recently held in Tesco v Elogicom Limited that the use of domain names with the term "tesco"in them which led consumers to Tesco's own sites (for the purpose of taking a commission on sales) was deemed to be offering services of Internet direction and therefore was held to be trademark infringement and passing off.

The increasing instances of domain name infringement is highly indicative of the value that a domain name can have to a business and means that the protection of this valuable intellectual property is becoming increasingly important.

Rebecca Samuel is an associate for Thames Valley law firm B P Collins. As a member of the Technology and IP team, she is able to work with businesses to protect all of the IP assets in their portfolio, as well as enforce and defend their IP rights. Contact Rebecca on 01753 279023 or technology@bpcollins.co.uk.