This guide holds a suite of templates that covers what to do if you discover that someone else has registered a domain name that is similar to your website domain name.
If you want to complain about the content of someone else's website because it's copying your content, your trademarks and/or wrongly giving the impression that it's connected with you in some way, you'll need our separate guide to handling someone infringing your IP rights on a website.
It's quite possible, and does happen, that someone infringes your trade marks, copyright or designs, and uses a similar website domain name. If that's the case, you'll need to follow the advice and combine/send the templates referred to in both of our guides.
Protecting your domain name
Whether you have officially registered the key element(s) of your domain name as a trademark or not (it’s not expensive to do, so you really should!), you're entitled to protect it and to object to other people freeriding on the creativity, reputation, investment of effort and money, etc., that you've put into it making it part of your brand identity.
It’s harder, but not impossible, to defend against third parties if you haven’t registered it as a trade mark.
(If you've not registered a trademark that's relevant to the similar domain name and the content on any associated website, it’s worth taking some expert advice on how to present the most robust persuasive objection. Our superb expert partners at Stobbs will be able to help you. Just select our Speak To A Lawyer service to get started.)
For great background on trade marks, what they are, how to register them and how to protect them more generally, check out our video guide on how to register a trademark.
How might someone be using your trade mark in a domain name?
Someone may do this in several ways, for example they might:
use your trade mark in a domain name with a different suffix
e.g. use the same word mark but put something like .co or .uk on theirs rather than .com.
So, someone registering Farillio.co would be using Farillio’s registered trade mark (FARILLIO) and any unregistered trade mark it has in that same word mark. Farill.co may also be a problem
register an almost identical domain name with any suffix
e.g. Farullio.something or Faryllio.something, which either look visually, or sound phonetically, pretty much same, or
use your trade mark within a more complex domain name
e.g. Gofarillio.something, or Farilliofeelings.something, where your trade mark is clearly evident
Your trade mark contains your goodwill
Goodwill basically includes the intangible items that add to a company’s value, which cannot be easily identified or valued as tangible assets (unlike equipment and property).
These intangible items include trademarks and the reputation of a brand. They may also take into account factors such as brand identity, customer relations, customer loyalty, ratings and staff satisfaction.
And this is where 'passing off' comes in.
What is passing off?
This is another means by which you can protect your brand identity, because 'passing off' is also another IP infringement.
So, passing off is essentially a legal right to protect yourself against someone:
- holding themselves out as your/your business, or
- creating (whether deliberately or inadvertently), a situation where such confusion is caused in people’s minds, that they assume the infringer is in fact your business or part of, or affiliated in some way with, your business
It's not as easy to argue as trade mark infringement
This is because you’ll need to prove that:
1. your market reputation is already of a high enough level for the public to assume the other trader was you, or
2. the other trader’s deception to the public has caused you a loss of business (or other relevant damage, such as reputation loss) as a result
So it can be harder for new businesses to lever, given that they often have yet to create the brand recognition and market reputation that is needed to fulfil the above criteria.
But even if you're a newbie business, you will still probably want to include the argument as part of any complaint that you make.
Your domain name is already registered
It's not hard to discover if someone else has already registered an identical or similar domain name to the one that you want.
So there's really no excuse for domain name infringers.
Indications of unscrupulous intentions
In fact, the first sign that someone may have the rights to a domain name you have in mind is that the full suite of suffixes (.com, .co.uk, .co, .io, .world, etc.) is not available when you search for the name that you want on a domain name registry.
Google gives infringers no excuse
Similar (non-identical) domain names may not show up on a domain name registry. However, most core words within a domain name can be searched across the internet.
And the resulting list of hits will generally give the person searching a pretty fair indication of whether someone else already has a conflicting domain name or trade mark.
(When Stobbs advises businesses about the key steps to take before applying to register a trade mark, one of the things they advise is checking various different spelling variations of words (including phonetic ones) on Google before you go any further.)
'Bad faith' registrations
All of the above can make it pretty hard for someone to argue, successfully, that they didn't register their domain name in bad faith. They're going to struggle all more so with that argument if the website to which their domain name relates is in a competitive line of goods, content or services to yours.
Bad faith registrations typically include those transacted with the aim of:
- selling the domain name to you for more than the original price to prevent anyone else using it
- disrupting your trade
- intentionally trying to attract users for commercial gain, or to steal their personal data, by confusing them into believing that they are still transacting with you, or that this particular site is associated with/endorsed in some way by, you
What to do if someone's using a similar domain name to yours
Well, to try to get the fastest resolution possible, you'll probably want to alert the third party to the fact that you've spotted their similar domain and that you want them to take various steps relevant to the manner in which they are holding or using the similar domain name(s).
There are several helpful regimes under which you can challenge a domain name infringer. You'll see these mentioned in the template letters too and we've included a summary of what each of them do, and how they will be relevant to you, at the end of this guide.
Template letter 1: let's complain about that domain name
You should write to the similar domain name owner. Use the first of our suite of template letters on domain name infringements as the basis for this:
This letter contains the key types of infringement that you'll need to cover. It also lists and explains what evidence of your ownership you should attach.
Finding contact details for the infringer
Knowing to whom you should send your complaint is the first step.
Generally, you should be able to find out when the site was registered, and via which domain name provider, by checking with a look-up service like whois.net.
This won’t typically provide you with all the other versions of the brand/domain names that may be registered, but you can usually check this with the domain name provider that is listed on whois.net.
'Cease and desist'
You'll see that the template letter is very clearly labelled with the words: 'cease and desist'.
This is a classic legal expression, generally used in legal actions. It’s designed to be attention-grabbing and to put a recipient immediately on notice that this correspondence contains something serious.
‘Stop – now, and never restart this or anything similar in future’ is what it really means.
The well-recognised threat being that if the recipient does not comply, legal action to force them to do so, and probably to also pay compensation and legal costs to the complainant, will follow.
Evidencing your ownership and rights
The template guides you to provide all the relevant detail you can, including:
- when you established your brand
- when you registered your domain name
- with which service provider it was registered
- where your domain is hosted
- how your site is used
Include here who it is used by and how many users/site visitors you have.
Your e-reputation status
i.e. whether your site displays strong TrustPilot or equivalent ratings from your customers
Whether the domain name forms part of your business’ email addresses.
And if so:
- how many people within your business have email addresses
- if you can determine this, how many emails your business sends on average in any day/week
- roughly where are those recipients located when they receive those emails?
If your domain name is very widely used by your staff because they're emailing a lot, for example, then in addition to your website traffic, these statistics help to demonstrate how much more confusing it will be, or already is, with someone else infringing it.
How prominently you reference and connect to your site in other materials. E.g. in advertising and marketing materials
How prominently others showcase or talk about your site. E.g. influence marketers, the press, awards that you’ve won – for your brand or for the site, etc.
Whether other websites or entities link to, interact with, or reference your site – and if so, how, and how extensively
Details of the sales you've made, when and to whom
Details of your turnover attributable to this trade mark and site domain name
The purpose of this detailed factual account, complete with any user or other statistics you’re able to provide, is to demonstrate the strength of both your brand and your website.
This explanation, in turn, evidences just how damaging the infringing domain name is, and how significant the level of confusion is/is reasonably anticipated to be, amongst your contact base.
Listing other domain and sub-domain names owned for this brand
This is also relevant and helpful if you've registered more than the one domain name variation.
Many domain name owners do not just register the one version of their site address. Most of us register several. Some of us really go to town.
Listing them all here also helps to show just how obvious it should have been to the recipient of your letter that the brand belongs to you...
...the obvious argument being that they must have seen this and so, inevitably, they would have been ‘on notice’ that their registration was going to be a problem.
Don’t forget to list sub-domains that you’re using as well. These are domains that are connected to a larger domain name, and typically they host content that is dedicated to an aspect of what the main brand and domain do.
So, for example, Farillio’s main domain name is Farill.io.
A sub-domain for us could be students.farill.io or startups.farill.io
Reserving your rights
This is also a well-used term in dispute-related correspondence.
In this case, it means that whatever you may choose to do or say in this correspondence, you are not prevented from pursuing and enforcing all your legal rights to protect your domain name and the IP rights relating to it.
How should you send the letter?
You should send it by email and by post. This helps prevent your intended recipient, your infringer, from arguing that never received your complaint.
What deadline should you set for reply?
A reasonable time frame would typically be 10–21 days from the date that you send the letter.
If the infringer is based abroad, you may want to offer a time frame towards the longer end of the period advised above.
Listing and evidencing your trade marks – Annex C
Make sure you include, for each trade mark:
- The mark itself and any and all visual representation of it
- Whether it was just the one mark or was registered as part of a series comprising subtle variations of one mark
- The date it was registered – or applied for (if not yet registered) (See below for more on the approach to take in listing your ongoing applications at this stage)
- The name of the registry with which it was registered. In the UK, it will be the Intellectual Property Office (IPO)
- The registration number that it was given
Ongoing trade mark applications
It may be worth getting some advice about whether you include applications for trade marks that have not yet been granted, in case this correspondence triggers an opposition to one of more of these applications by the recipient of this letter.
You’re not obliged to list the applications.
It can be helpful to list them though, since they provide further evidence of your commitment to, and continued evolution of, the brand to which your domain name relates, and to which the infringing domain name is damaging.
If you have a number of registrations already for the trade mark in question, you can probably be more relaxed about also listing ongoing applications.
Unregistered trade marks
If you have not registered the mark(s), but you have been using them for some time, they will be treated as unregistered trade marks and to evidence them and give yourself the best prospects of a persuasive case, you will need to:
show when, how and where, you have used the unregistered trade marks
(the more extensive your use and the longer you have been using them, the better your prospects of successfully persuading the third party to stop using their domain name)
provide as much evidence of consumer/user recognition of your trade mark as you can
e.g. where it has been referred to in third-party publications (news-sites/publications and magazines are always helpful), on other websites, on packaging, on labelling, at events that you might have sponsored, etc.
Additionally, the greater the degree of overlap between you and the similar domain name owner's customer audience, products and services, the stronger (and therefore more successful) your objection is likely to be.
For friendly expert help about what to do when you’re faced with an infringer, especially if you need help tracking down who’s responsible, our friendly legal beagles at Stobbs can help you.
Just select our Speak To A Lawyer service and we’ll get you connected.
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