Posted by Irene Trubbiani Montagnac,
Retailer Argos beaten in domain name battle at UK court
In a landmark ruling, UK retailer Argos (UK Argos), the catalogue shopping giant that is owned by the Sainsbury’s supermarket chain, recently lost its claim for trade mark infringement and passing off through the domain name argos.com against US software company Argos Systems (US Argos), which trades in North and South America.
While UK Argos owns two EU trademarks for the word ‘Argos’, US Argos has traded under the name ‘Argos’ since 1991 and in 1992 registered its domain name argos.com for use as a commercial website. By 2004, a large number of people from the UK and Ireland were visiting argos.com under the misunderstanding that it would lead them to the UK Argos website. Between 2008 and 2015, US Argos created a version of the site for the UK traffic which displayed advertisement through Google’s AdSense programme (an advertising program that UK Argos also chose to participate in).
Interestingly, Argos UK never objected to the US company’s registration of argos.com per se. Instead it was their use of the ‘Argos’ name in Google advertising banners that underpinned the claim.
The court rejected all claims by UK Argos. It was held, in relation to the trademark infringement, that the use of the sign ‘Argos’ did not impair the distinctive character of the UK Argos’ trademarks or take unfair advantage of them. With regard to passing off, the claim failed as the judge did not find any misrepresentation by US Argos which led the public to believe that the goods or services offered by US Argos were those of UK Argos.
The decision highlights the value of domain names and other intangible assets and shows how fierce the fight for online territory has become. It shows the importance of registering not only those domains that a business intends to use, but also variations of them even if this is merely done to protect a brand and to avoid similar domains falling into the hands of others. Consideration of defensive domain name registrations should in fact form part of most businesses brand protection strategy, alongside applying for trade mark registrations.
Finally, if a company wants to benefit from a .com domain, it should, in order to avoid that someone else does it first, register the domain promptly, registration that can be achieved for relatively little expense.
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