More

Internet & Domain Names

It is not uncommon for companies to find their trade marks registered by others as domain names since domain names are allocated on a first-come-first-served basis. The act of registering another company’s trade mark as domain names with a view to profiting from that company’s goodwill, often by offering to sell to that company or his competitor the registered domain names at an inflated price, is generally referred to as “cybersquatting”. A company’s trade mark may also be registered by competitors as a domain name for the purpose of disrupting the company’s business. Mechanisms of domain name dispute resolution are available in Hong Kong for trade mark owners to protect their rights against such bad-faith registration by cyber squatters, no matter whether the trade marks have been registered in Hong Kong or elsewhere.

Here at ONC, we offer a range of pro-active services to help our clients protect their trade marks from being misused as domain names, which would cause confusion and disruption to the market place. We assist our clients in monitoring the domain platforms for availability, applying for and registering domain names, advising on internet gaming and multimedia regulations; and data protection.

Examples of our work include:

  • assisting a major bank in obtaining domain name registrations;
  • arbitration to recover domain name for a major apparel company;
  • preparing domain name transfer agreements for a prominent cosmetics company;
  • advising a leading global gaming platform on regulations in relation to online streaming and data protection services; and
  • advising a leading property fund on its use of social media, advertising and development of online and mobile applications.

If you would like to know more about our intellectual property practice or how we can help your business, please contact us at (852) 2810 1212 or at ip@onc.hk.

Please refer to our articles in ‘Knowledge’

Recommended Posts

Cybersquatting: How to Reclaim Your Domain Names?
It is not uncommon that reputable companies find their trademarks registered by the others as domain names since domain names are allocated on a first-come-first-served basis. The act of registering another company’s trademark as domain names with a view to profiting from that company’s goodwill, often by offering to sell to that company or his competitor the registered domain names at an inflated price, is generally referred to as “cybersquatting”. A company’s trademark may also be registered by competitors as domain name for the purpose of disrupting the company’s business. Mechanisms of domain name dispute resolution are available in Hong Kong for trademark owners to protect their rights against such bad-faith registration by cyber squatters, no matter whether the trademarks have been registered in Hong Kong or elsewhere.
Online Advertising - Can I Sue Competitors for Copying My Trademark in Websites' Metatags (Source Code Tags) to Improve Rankings in Search Engines?
With the advancement of technology nowadays, companies are keen to promote their goods or services through the Internet. In particular, having a strong online presence is desirable for website owners as they always want their websites to appear as the first result at Google search when the keywords of their business interest are being searched for. A successful online presence would help consumers to easily identify their products so as to stand out from the crowd. Many companies adopt “search engine optimisation” strategies as their marketing tactics to attract online traffic. By doing so, website owners may rely on metatags to improve their rankings in the search engines’ result pages. However, it raises the question of whether a website owner would be infringing others’ rights if the metatags (the invisible data on their website) they have chosen are other’s registered trademarks? This article explores the potential liability of website owners in copying others’ trademarks as metatags for the purpose of achieving higher ranking in search engine results.
English Court of Appeal Affirms Injunctions Against ISPs for Websites Selling Counterfeits
As a follow up to our previous article, “Website Blocking Order – a Possible Remedy against Trade Mark Infringement on the Internet?”, we now revisit the topic as the English Court of Appeal handed down its decision in Cartier International AG & Ors v British Sky Broadcasting Limited [2016] EWCA Civ 658 in July 2016. The Court of Appeal affirmed the High Court decision, which is believed to have paved the way for trade mark owners to bring website blocking order actions against internet service providers (“ISPs”), forcing them to block their customers from accessing websites which contain infringing contents.
Back to top