Registering competitors domain name?

Philbert

Hi Guys,

I have been asked to organise a domain name for a client and I would like to hear your thoughts on the following.

A company in the UK operate their business on company123.com/.co.uk

We would expect them to try to capture some of the Irish market in the near future. They are a direct competitor.

They have no Irish/UK/EU trademarks on their company name. My client wants to secure the Irish domain company123.ie which might slow them down, or at least cause minor inconvenience.

They are also considering redirecting the domain to their own.

Your thoughts? Any legal issues to this?

Cheers.

Philbert.

louie

It happens all the time and your client probably does it to protect his/her business.

Sleipnir

.ie domains are a little more difficult to secure then say, .com. You generally have to show that you have a right to the .ie domain before you can get it.

let's say your company is called Fruit4U and you trade as that. You have a right to the Fruit4U.ie site but you'll need to supply the domain registrar with supporting documentation backing up your claim.

If you then decide to get U4Fruit.ie and F4U.ie also, you won't get it as you can't show that you have a right to that .ie domain.
Register.ie won't just allow you to buy up whatever domains you want and just hang onto them unless you can show that you have a right to them.

mneylon

Whether they have registered trademarks or not is irrelevant. They would have a "common law" trademark through usage ie. if they've been in business for X years and traded with a particular name they'd be able to prove that they have rights in the name.

If their name is unique ie. not Iron Gates Ltd but something more contrived then it would be very hard for you to prove that you had rights in the name should it come to a WIPO case.

You'd also have issues registering the IE domain name in the first instance unless you were able to show that the name was related to your business or you had a registered business name.

Ultimately it's up to you, but I would say "be careful"

watty

The Irish register, rightly IMO, usually won't let you get the name of some other company.

Other Registrars now pretty much will force people to give up such a name if the "real" company wants it and there is any evidice you simply got the name to be awkward in some way.

I think the days of people making big money out of cybersquatting are numbered.

Eoin

Watty wrote:

The Irish register, rightly IMO, usually won't let you get the name of some other company.

I don't think that's quite true. Once you get get an RBN then you can probably get the domain name.

Philbert

Sleipnir wrote:

.ie domains are a little more difficult to secure then say, .com. You generally have to show that you have a right to the .ie domain before you can get it.

Thanks Sleipnir. Sorry, I should have clarified that we know the ins and outs of ie domain registration.

watty wrote:

I think the days of people making big money out of cybersquatting are numbered.

Squatting I would agree, hence why I am checking to see if there are any legal issues beyond the moral implications. Although it is a defensive measure, as appose to cybersquatting with a view to selling the domain for a higher price etc..

blacknight wrote:

Whether they have registered trademarks or not is irrelevant. They would have a "common law" trademark through usage ie. if they've been in business for X years and traded with a particular name they'd be able to prove that they have rights in the name.

If their name is unique ie. not Iron Gates Ltd but something more contrived then it would be very hard for you to prove that you had rights in the name should it come to a WIPO case.

Yes, it is quite contrived. But assuming they acquire the domain via an RBN, it might be difficult for the company in the UK to issue legal procedings without any prior activity in the country. Not that Im a legal eagle or anything!

Ill recommend they get legal advise..

Thanks for your input.

mneylon

Philbert wrote: »

. Although it is a defensive measure, as appose to cybersquatting with a view to selling the domain for a higher price etc..

Um no.

If they point it at their existing website then it can be seen as "passing off", which is one of the basic tests of a WIPO UDRP.

Philbert wrote: »

Yes, it is quite contrived. But assuming they acquire the domain via an RBN, it might be difficult for the company in the UK to issue legal procedings without any prior activity in the country.

They wouldn't have to issue legal proceedings to get the domain. All they'd be doing is using the IEDR's dispute policy with WIPO to get it.

The thing is that they could already be trading with Ireland and you might not be aware of it.. ie. all they need is one supplier or client in Ireland for there to be trade

smemon

Less time focusing on competitors, more time focusing on own site - that would be my view