Donotpiggybackorabusemyrights.com

The days of being able to register domain names without considering third party intellectual property rights (“IPRs”) have long since gone. The recent “ihateryanair.org” case shows how IPRs belonging to one party can restrict another from operating a particular domain name.

In the initial stages of the development of the internet, there were reports of individuals registering domain names which contained well known brand names, before the brand owners were able to do so (the practice known as “cybersquatting”). The brand owner (and therefore the owner of the IPRs in the brand) was then required to pay money to the registering party to have the domain name transferred to the brand owner. Failure to do so could have had severe consequences for the brand as a whole.

However, rules have since been developed by the courts to regulate the registration of domain names. These rules restrict the registration of domain names that disrupt the business of a brand owner by taking advantage of, or otherwise infringing, the brand owner’s IPRs.

The key aspect of the rules is that the complaining party must establish that the registration of the domain name amounts to an “abusive registration”. What amounts to an abusive registration varies from case to case. But the complainant must prove a right (ie an IPR) over an element of the domain name.

For example, and as was the case with the “ihateryanair.org” case, an abusive registration includes the circumstances where the domain name includes, or makes reference to, a trademark of another that affects the business of the brand owner.

The development of these rules is an interesting example of how rules and regulations develop, and continue to be developed, to deal with the new issues created by the expansion of the internet. For further examples, please see http://www.nelsonslaw.co.uk/site/news/blogs/ip_blog/state_of_mind.html and
http://www.nelsonslaw.co.uk/site/news/blogs/commerce_technology_blog/google_data_protection_breach.html.

Written by Matthew Read, a Solicitor in the Nelsons Commerce and Technology group. To find out more about our Commerce & Technology group, click here.