Domain Name Forum - Web Hosting Forum - SEO Forum

Hello guys,

Quick Q really, also your feedback would be interesting too.

There have been a number of high profile cases recently, where Domain Names have been 'won back' by major corporations, or the 'famous'.

For example, if you registered a domain that had the word 'HSBC', 'Micro$oft' etc within the name, you dont really have a defence (as an individual), as the said company would claim that you have registered the name for financial benefit, bad faith, parking etc. Ultimately you'd lose your domain, plus the fee you paid to register it. Also lumbered with hefty court fee's, as a result of the claim raised by the corporation.

Is this usually the case, or can we really register any name and not have to worry about big brother knocking on the door? Where do we stand?

My general advice would be: if you're registering your domain to use it for profit - to resell, or to drive traffic, or for an ecommerce website - you should check that you're not infringing any trademarks.

The only time a legit domain registrant might get in trouble over trademark laws is if they failed to check that their new domain name hasn't already been trademarked by someone else. For example, UTube.com, a scaffolding company, has been arguing with YouTube.com for ages because of misdirected emails etc. This is something to be careful of.

Gripe sites are notorious for keeping trademark domain names. See Alfred Donovan's gripe site about Pipex. The domain name is pipexcommunicationsplc.com, and he gets away with it because he displays no advertising, he's never tried to sell the domain to Pipex or anyone else, and he has a "legitimate interest" in the domain. (See the precedent set in WIPO documentation about Donovan's previous argument over royaldutchshellplc.com.)

If you're intending to use a trademark to profit from it illegitimately, you deserve to be caught!

From what I understand, when you register a domain name - that may be contentious - then you have to be able to show that you have some "claim" to that name.

So if you are registering something with HSBC in the name then if they take you through a Dispute, you will have to show why you have a claim to that name. It doesn't have to be a trademark (from both sides of the claim) either.

Its done on a case-by-case basis too. There was a Mr McDonald a few years back who had to hand a domain with mcdonald in it, back to McDonalds. So even though he may have had a claim to the name, he still lost!

Have a look at this:
http://www.wipo.int/amc/en/domains/decisions.html
you can see what they decided on cases here.