Domain sellers do not check IPO trademark registers before selling domains.
Legal cases show that an increasing number of domain buyers are being sued for trademark infringement. Tribunals are awarding £30,000 to trademark owners.
EU IPO has received 68,000 domain name disputes. How can you avoid this?
UK trademark rights
I have a registered UK trademark for CONSULT-SMP (as a word mark rather than just a logo), and I have the exclusive right to use that mark or anything confusingly similar in the UK for the goods and services covered by your registration. This means I can generally stop someone from using names such as:
- consultsmp.uk
- consultsmp.co.uk
- consultsmp.org.uk
- consultsmp on UK marketing materials
if their use is likely to confuse customers or takes unfair advantage of your mark.
What about consultsmp.de, consultsmp.fr, consultsmp.us, etc.? Owning a UK trademark does not automatically give me rights outside the UK. Someone using:
- consultsmp.de
- consultsmp.ca
- consultsmp.au
may be perfectly lawful in their own country unless:
- I also own trademark rights there,
- they are targeting my UK customers, or
- their activities create confusion in the UK.
A foreign company could still infringe my UK trademark if they:
- advertise or sell to UK customers,
- price in pounds sterling,
- ship to the UK,
- have UK-focused SEO or marketing,
- or otherwise target the UK market.
In those situations, UK trademark law may still apply.
If they’re acting in bad faith
If they’re deliberately trying to impersonate my business or exploit my reputation—for example by copying my branding, website, or claiming to be my company—I may have stronger grounds to act. Depending on the circumstances, I may be able to:
- send my trademark certificate to any ISP they use and remove them
- offer mediation rather than pursue trademark infringement
- bring a domain-name dispute under procedures such as the World Intellectual Property Organization’s UDRP (for many generic domains like .com), or
- use the relevant country-code domain dispute process where available.
What I can do to reduce future risks
- Check my ongoing trademark coverage
- Is it a UK word mark for “CONSULTSMP”?
- Check future classes of goods/services are covered
- Monitor new registrations
- Keep track of new domain registrations and trademark filings using CONSULTSMP.
- Register in key markets
- If I intend to trade internationally, consider filing trademarks in countries where I do business or expect expansion.
- Secure important domains
- Register key country-code domains
- Take action where appropriate
- If another party is targeting my UK customers or acting in bad faith, advise them of risks and offer mediation before sending a cease-and-desist letter or starting formal proceedings.
Examples below
https://consult-smp.com/archive/2021/04/4252.html
https://consult-smp.com/archive/2020/12/ip-infringement-case-study-domain-names.html