In this post we’re going to take a look at domain names and their relationship to trademarks, including the measures that domain name owners can take to tackle the problem of domain name hijacking. We’re therefore going to look at the following issues:
- What are trademarks?
- What are domain names?
- Is it possible to register a domain as a trademark?
- What is domain name hijacking?
- If registered, how does a company or individual tackle domain name hijacking?
What are trademarks?
A trademark is a simple way of communicating to the public the message that “I make or do this”. Under the Trade Mark Act 1994 a prima facie registrable trade mark is any sign which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another.
An example of a trade mark is “TESCO” – this is a sign which is represented graphically and distinguishes the goods and services that TESCO sells from its competitors.
What are domain names?
Domain names are identification strings that define a realm of administrative autonomy, authority or control on the internet. Continuing from the above example, “Tesco.com” is an example of a domain name – it is a string (a finite sequence of symbols) which Tesco has control of, authority over, and exercises administrative autonomy within.
Is it possible to register a domain as a trademark?
To register a domain name as a trademark it is necessary to establish that the domain name functions as a trademark. The domain name must have trade mark significance to be registrable as a trade mark – for example “orange.com”.
What is domain name hijacking?
Domain name hijacking is the act of changing the registration of a domain name without the permission of its original registrant.
Domain hijacking is normally carried out illicitly – either by exploiting a security vulnerability in the domain name registration system or through deceiving the registrar (the domain name registrar) or the registree (the domain name owner). This is a form of identity theft. It differs from “domain sniping”, where the “sniper” registers a domain name whose registration has lapsed.
Domain name hijacking is normally carried out with the aim of diverting traffic from the “original” site to their own site. It can be particularly effective if the “original” brand is an established brand (such as, for example, Tesco).
If registered, how does a company prevent domain name hijacking?
Domain name hijacking is a criminal as well as a civil offence. It necessarily involves the illegal obtaining of the details of the domain name owner or hacking into the domain name registrar.
If the domain name owner (“the owner”) incurs losses as a result of the domain name hijacking then the owner may be able to pursue the hijacker for such losses. This may involve a claim for trade mark infringement, copyright infringement, or passing off, depending on the circumstances.
If you discover that your domain name has been hijacked and are incurring losses as a result it is important that you obtain specialist legal advice.