If a UK domain name held by someone else is similar to your own name or trading style, you can...
If a UK domain name held by someone else is similar to your own name or trading style, you can seek to have it transferred to you by making a complaint to Nominet UK through its Dispute Resolution Service (DRS). To succeed in a DRS complaint, it is necessary to show that your business has rights in respect of a name or mark which is identical or similar to the domain name and that the domain name is an abusive registration in the hands of the owner. Recently, Portakabin Ltd succeeded in an application for the transfer to it of the domain name 'portaloohireltd.co.uk'.
The domain name had been registered by a company that provided specialist services and equipment within the construction, plant hire and site services sectors. Portakabin Ltd, which had been designing and manufacturing high-quality portable toilet buildings using the 'Portaloo' trade mark since 1965, sought to have the domain name transferred to it.
The Nominet expert observed that the dominant element in the domain name was Portakabin Ltd's brand. Although it included the word 'hire' and the term 'ltd', that failed to distinguish the domain name from the trade mark. The expert decided that Portakabin Ltd had rights in respect of a name or mark that was identical or similar to the domain name.
The company that owned the domain name asserted that the term 'Portaloo' had been selected because it was commonly used in ordinary language to describe temporary toilet facilities. It said that there was no evidence of actual confusion: no customer complaints or misdirected enquiries had been produced, and no example had been provided of any person believing that the domain name was operated by or connected with Portakabin Ltd. It had not displayed Portakabin Ltd's branding or displayed its logos.
However, the expert observed that, given how well known the Portaloo brand was, it was difficult to conceive of circumstances where the use of the domain name by a company involved in hiring portable toilets would not be associated with Portakabin Ltd, even if only on a passing basis. It was very likely that an internet user who used the domain name would confusingly connect it to Portakabin Ltd. On the balance of probabilities, the expert decided that even in the absence of evidence of actual confusion, any future use of the domain name would confuse users into believing that its owner was affiliated or associated with Portakabin Ltd. Accordingly, the domain name was an abusive registration.