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Registering .ie website with brand name in it - legalities?

  • 13-03-2011 11:23am
    #1
    CapedCrusader
    Registered Users, Registered Users 2 Posts: 215 ✭✭


    Hi folks,

    What are the legalities of registering a website with a brand name in it?

    Take Best Widgets as an example - a hypothetical established brand. I want to sell Best Widgets products so I want to set up BestWidgetsDirect.ie or BuyBestWidgets.ie or something. No passing off here. You're up front that you're just a retail website selling their products and not affiliated in any way.

    First of all, assuming you could register that domain in the first place, is it ok from a legal perspective?

    Second of all, assuming it's ok from a legal perspective to have and use the domain name to sell the Brands' Products, will the IDR give it to you? I understand that you'll need to have some justified claim to the domain, so you need to register a business name... will "Best Widgets Direct" be a valid business name in the CRO's eyes, will they register it for you?

    Would be grateful for any thouhts, comments!

    Cheers


Comments

  • #2
    [Deleted User]
    Posts: 0 ✭ [Deleted User]


    CapedCrusader wrote: »
    Hi folks,

    What are the legalities of registering a website with a brand name in it?

    Take Best Widgets as an example - a hypothetical established brand. I want to sell Best Widgets products so I want to set up BestWidgetsDirect.ie or BuyBestWidgets.ie or something. No passing off here. You're up front that you're just a retail website selling their products and not affiliated in any way.

    First of all, assuming you could register that domain in the first place, is it ok from a legal perspective?

    Second of all, assuming it's ok from a legal perspective to have and use the domain name to sell the Brands' Products, will the IDR give it to you? I understand that you'll need to have some justified claim to the domain, so you need to register a business name... will "Best Widgets Direct" be a valid business name in the CRO's eyes, will they register it for you?

    Would be grateful for any thouhts, comments!

    Cheers

    You'd be open to claims of passing off and the WIPO procedure with regard to protected identifiers. The Report of the Second WIPO Internet Domain Name Process states that trade mark does not mean registered trademark for the purposes of Protected Identifiers, but rather just a trade mark in which the Complainant has rights. In fact, unregistered trade marks have often been held to satisfy the standard for a Protected Identifier (such as Bennett Coleman & Co. v. Steven S. Lalwani, WIPO Cases D2000-0014 and D2000-0015 (March 11, 2000))

    The company that owned the product would be able to take the domain name off you and pursue you for damages in passing off.

    Tesco -v- Elogicom might be a decent case to look at. It's an English case on a related issue, albeit outside the scope of the Procedures, which dealt with a company which registered domain names that a casual internet user may mistakenly enter into a browser when trying to access the services of Tesco supermarkets in the United Kingdom. The court held that the “tesco related domain names which [the defendant] registered all fell into the category of names which were inherently misleading”. (Tesco v Elogicom (2006) EWHC 403 (Ch)) In that case the names all contained the word “tesco” combined with some prefix or suffix which a casual browser might use such as “2u” or “forU”.


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