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Domain name battles are a legal minefield for retailers, warns solicitor

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Ravi Mohindra, partner and intellectual property specialist at law firm Clarke Willmott, has warned that a string of recent cases have highlighted dangers facing brand owners when disputing the use of trade marks online.

“Every year over 2000 cases involving the unauthorised use of brand names in domain names are brought before either the courts or under a domain name dispute resolution policy set up to deal with the majority of these cases, called the UDRP,” he said.

“Brand managers probably think they have automatic ownership of their trade marked brands, including anything online, but recent rulings have shown this may well not be the case.”

To illustrate this, Mohindra points to a recent ruling which went against Swedish car maker Volvo who had complained about a website trading under the name

“Volvo claimed this was an infringement of their trade marks and said they wanted control over the domain name,” he said. “However, the ruling went in favour of, saying that although the domain name was confusingly similar to Volvo’s trade mark, the domain’s owners had a legitimate business interest in using the name.”

Another case brought under the UDRP involved a website with the domain name The owners of the Raleigh trade mark had argued this was a clear infringement of their intellectual property rights, but again ICANN disagreed, ruling in favour of because its owner was using the name for a non-commercial forum site for fans of Raleigh bikes and had not registered the name in bad faith.

Finally, says Mohindra, with Google UK now allowing advertisers to bid on brand keywords as part of its AdWords programme, brand owners are finding competitors using their trade marks and brand names online and disrupting their business.

“There’s very little you can do about someone registering a domain name which incorporates your trade mark and, potentially, hurts your business,” says Mohindra. “The lesson here is that it is crucial for brand owners to take professional advice and gather as much information as they can before embarking on a complaint.”

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