Passing off a company name: what are the business legal issues?

One of my competitors has registered similar URL’s to those of our company and our products which redirect users to their website. Can I do anything about this?

A. Simon Halberstam of Sprecher Grier Halberstam LLP writes:

You say that your competitor has registered similar URLs to yours and these re-direct people to its site. This sounds like a classic example of ‘passing off', especially if your URLs are not generic in nature.

It sounds as if your competitor is engaged in unfair competition, which attracts various legal remedies. Passing off means creating confusion in the mind of the public so that your competitor might benefit from your goodwill. You can go to court and sue, and if you win, proving diversion of business and loss of profits and/or goodwill, you may get substantial damages. If your competitor has indulged in additional dubious practices, such as meta tagging its website with terms including your company or product names, this would reinforce your case.

If you have any registered trademarks that include the same word or words as in your URL/product names, your position is even stronger, because a registered trademark confers a monopoly of the use of that term on the owner.

Rather than go to court, which always has legal risks, you may prefer to go through the dispute resolution procedures provided by the various domain name registrars. These usually involve little if any cost. If successful, you will get the names transferred to you. However, these systems don't provide for the complainant to recover damages and therefore would not apply the same sort of pressure on your competitor.

Nominet runs the system under its own rules and NSI/Verisign runs the system for .com, .org and .net domain names under the UDRP rules system.


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