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Domain Names and e-Words
Much confusion surrounds the relationships between domain names, Trade Marks, and Passing Off. A domain name is the part of an Internet address which counts as the identifying name - the bit which catches the eye and tells the user most about who you are. In our case, our full address is 'www.swarb.co.uk' of which the element 'swarb' is the bit which really says who you are dealing with.
A Trade Mark is a registered version of a trading name (or other sign). It is a simple breach to trade under a name which is registered to somebody else.
Passing off is a tort - a legal wrong, followed often by an action for damages. Having established in the public mind an association between the term 'swarb' and legal services, someone else comes along and uses my name to promote their own services. We use 'www.swarb.co.uk', and have are fairly well known on-line under that name. If soemebody else came along and used, for example 'swarb.com' to sell legal services in the UK, I would be upset. I could properly claim that he was trading on, taking the benefit of, my reputation, by misleading potential clients.
A recent case eFax.com Inc v Oglesby Times 16 March 2000 deals with one of these issues. The claimant operated a service wich allowed you to send an fax which the claimants would then convert and deliver as an e-mail. The respondents began a similar service under 'efax.co.uk' The first company was upset and sued, claiming that the second service was passing off their service as that of the claimant.
The defendant was successful. He claimed that the word 'eFax', had become merely descriptive. Descriptive words cannot found a claim for passing off, since the meaning of the word indicates the nature of the service, rather than identifies the source of the supply. By calling my practice 'The Solicitors', I could not prevent others using the description, because the word really describes what I do, rather than acting as a name. Those who studied linguistic philosophy might remember the impropriety of allowing names with meanings.
The claimant countered by referring back to old cases on passing off. These cases limited the words which are to be held to be descriptive must be 'part of the common stock of language' (Reddawat v Banham ( RPC 218, 228)). Here Jonathan Parker J, held that that class of words forming common usage cannot be held to be stagnant. More and more, words are being prefixed with the letter 'e', and an 'e-language' is being developed, and the term 'efax' must now be interpreted as being a description of the service, rather than a name. Reliance upon the old test will become more difficult.
The fact that the case was lost holds out hope of rationality prevailing, but only, perhaps, for those with enough money to fight their corner. On many occasions, these disputes arise between people who genuinely do not have the funds or will to fight, being supplied instead with a sufficiency of common sense.
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