For many businesses their website is an essential part of their brand and customer experience. It is, therefore, very important to be aware of what domain name rights you have especially if this is closely linked to your organisation’s brand.
A domain name is the part of a URL that is unique to a particular website (for example Myerson.co.uk) Domain names are capable of being registered with an accredited registrar. They can also be registered as trademarks.
Conflicts can arise where different parties have competing interests in the same domain name. Dealing with domain name disputes can be technical and are dealt with by specialist Courts or by specialist organisations such as Nominet or the Internet Corporation for Assigned Names and Numbers (ICAAN).
In a recent decision by Michael Silverleaf QC of the internet watchdog Nominet, eBay and Gumtree were unsuccessful in trying to shut down the website ebuygumm.co.uk which has been hailed as Yorkshire’s answer to eBay and Gumtree.
Both eBay and Gumtree provided Nominet with substantial information to demonstrate the extent of their respective reputations and goodwill. This information included details of sales, the number of transactions and its social media followings on Facebook, Twitter, YouTube and LinkedIn. Both eBay and Gumtree also registered trademarks for their respective brand names during the period 1998 and 2005.
It was not until May 2016 that Auto Claims UK Ltd registered the domain ebuygumm.co.uk. Since then, the domain has been used by Ebuygumm Limited with Auto Claims’ consent to operate a buying and selling website for UK residents. Part of Ebuygumm’s response to the complaint was that it had invested hundreds of thousands of pounds developing the Ebuygumm website and marketing the site by using radio advertising and a UK tour bus which had on it pictures of Ebuygumm’s mascots – a pigeon, ferret and a whippet.
These mascots had some significance to Nominet’s decision because it was Ebuygumm’s explanation that the mascots embodied the northern ethos of the Yorkshire phrase “eeh bah gum” or “ee by gum” which is generally understood to mean “oh my God” or “by God” on which Ebuygumm’s name was said to be based.
Both eBay and Gumtree complained that by using the name Ebuygumm, this referred to their registered trademarks. They gave two reasons for this:
- The Ebuygumm name on the website copied the colour combination and font of the eBay logo; and
- The negative commentary on the Ebuygumm website about “other” online marketplace platforms which, in light of the choice and presentation of Ebuygumm’s name in the colour scheme used by eBay and Gumtree, could only be seen as a reference to both eBay and Gumtree.
More generally, both eBay and Gumtree complained that their brand names were distinctive and very well known and therefore Ebuygumm would be confusing to internet users and was taking unfair advantage of eBay and Gumtree and the brands they had developed. eBay and Gumtree also made the point that Ebuygumm was actually based in Birmingham and therefore had no connection with Yorkshire.
In rejecting eBay’s and Gumtree’s complaint, Michael Silverleaf QC made the following comments:
- The phrase “eeh bah gum” would be recognised by people outside Yorkshire and therefore little or no significance should be attached to the fact that the individuals behind Ebuygumm were actually from Birmingham.
- eBay and Gumtree had not established significant similarity between Ebuygumm and eBay. In coming to this decision, Mr Silverleaf QC referred to the website ebuyer.com which he believed had a much more similar name to eBay than Ebuygumm did.
- eBay and Gumtree had failed to provide any examples of members of the public being confused between their websites and the Ebuygumm website. Mr Silverleaf QC added that eBay and Gumtree “have not produced any results, presumably because they do not exist”.
Our specialist intellectual property disputes team can advise on a broad range of intellectual property disputes including those relating to domain names and trademarks. The team is also highly skilled at advising on intellectual property disputes relating to copyright, design rights, patents, confidential information, reputational management issues and data protection. We are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally. If you need advice on domain names, trademarks or any other intellectual property infringements, please do not hesitate to contact a member of the team today.