By the time I wrote my dissertation in the late 90s, I was well acquainted with common law rights. As a law student, I could happily recite the “classical trinity” of passing off – goodwill, misrepresentation, and damage – before the kettle had even finished boiling. But applying that doctrine to the emerging world of domain names was a different matter.
In the late 90’s, domain names were still a bit of a legal free-for-all, as I’ve covered in previous articles. Most cases involved registered trade marks, because they were easier to prove, enforce, and generally get more excited about in court.
But what about businesses with unregistered rights – small businesses, growing brands, or those who simply hadn’t yet formalised their IP portfolios? Could they rely on passing off to stop someone registering a similar domain?
I thought so. And I said so – at slightly tedious length.
I argued that domain names could generate goodwill. If www.brown.com had a reputation, and someone registered www.br0wn.com (with a zero), intending to mislead customers, that was classic passing off territory. Goodwill? Check. Misrepresentation? Check. Damage? Almost certainly, especially when websites were often a customer’s first point of contact.
To my credit, this is one bit of my dissertation that’s aged reasonably well. The idea that common law rights can support action in the domain name space has found its way into the frameworks we use today – though, unsurprisingly, the evidentiary bar is now a bit higher than “looks a bit dodgy”.
Under the UDRP, a complainant can succeed without a registered trade mark, but only if they can demonstrate that their unregistered mark has acquired distinctiveness – becoming a source identifier in the minds of consumers. WIPO’s Overview 3.0 section 1.3 spells it out: panels look for evidence of use, recognition, advertising, sales, and more. Unsupported statements won’t cut it. And if your mark is arguably descriptive, the burden gets heavier.
The key is showing your brand has a secondary meaning – and ideally, some indication that the respondent was targeting your brand because of its reputation.
Nominet’s DRS takes a similar approach. Section 2.2 of the DRS Overview says the Expert “needs to be persuaded on the balance of probabilities” that enforceable rights exist. For unregistered marks, this usually means showing use over a meaningful period and evidence that the public recognises the mark as referring to your goods or services.
Again, bare assertions aren’t enough – but there also isn’t a need for overwhelming courtroom-level proof. A good bundle of sales figures, press clippings, advertising material, and third-party mentions will usually do the job.
Back in the late 90’s, I didn’t have WIPO Overviews or DRS Guidance to quote – they didn’t exist – I was mostly guessing, albeit with some legal theory and a rather cheery, chirpy tone. But I like to think I was on the right track.
Looking back, this was one of the moments where my younger self spotted something real: the law’s flexibility, and its ability to adapt an old doctrine to a new frontier.
Of course, I also thought domain names should include seven-digit trade mark registration numbers (see my other article…), so let’s not get carried away.
Were you part of the Internet’s Jurassic period—back when we connected via Freeserve, argued on Usenet, and still checked Ceefax for the football scores? If not, did you wish you were? Either way, drop a note in the comments.