Many Internet retailers endure the frustration of seeing potential customers diverted to unconnected websites with confusingly similar names. As a case concerning a Scottish haggis manufacturer showed, however, resolving such issues is all in a day’s work for an intellectual property lawyer.
Since it was established in the 1950s, the manufacturer had established a worldwide reputation for Scottish foodstuffs, particularly haggis. It objected when a company that specialised in marketing Scottish-themed food hampers registered an Internet domain name featuring a word that was identical to the manufacturer’s trading name, save for the addition of a single ‘s’.
On the manufacturer’s behalf, specialist lawyers complained to Nominet, the Internet watchdog that maintains the .uk domain name registry. The website operated from the disputed domain sold the manufacturer’s products, but also provided links to other sites which marketed competing goods. The disputed domain was already said to have caused confusion amongst Internet users who wrongly believed that it was either controlled by or commercially connected to the manufacturer.
The company denied that the manufacturer had any cause for complaint, arguing that its website makes plain to visitors that it merely sells the manufacturer’s goods. It characterised the application to Nominet as an example of corporate bullying.
In upholding the manufacturer’s complaint, however, a Nominet expert found that it has substantial goodwill in its trading name, which is protected by trade marks. The disputed domain would be seen by Internet users as implying some kind of official connection between the company and the manufacturer.
There was also a clear risk of initial interest confusion, in that potential clients who typed the manufacturer’s trading name into a search engine, or the name combined with the word ‘haggis’, might inadvertently arrive at the company’s website. In the circumstances, the company’s registration of the disputed domain was abusive and the expert directed its transfer to the manufacturer.