Ireland

[IE] Company Ordered Not to Use Domain Name

IRIS 2001-7:1/29

Candelaria van Strien-Reney

Faculty of Law, National University of Ireland, Galway

In October 2000, the Irish High Court issued a temporary order to restrain a company from using a domain name on the grounds that it would be likely to cause confusion.

The second-named plaintiff is a company that provides information relating to Ireland to Internet users in a simple manner and free of charge. In 1997, the company registered with an international control organisation a number of domain names, using various combinations of the words "Local" and "Ireland". These domain names, together with other intellectual property rights, were subsequently transferred to the first-named plaintiff, Local Ireland Limited. The website was one of the busiest in Ireland and also gained a considerable reputation abroad.

Last year, Local Ireland Limited became aware that the first-named defendant had begun trading under the business name "Local Ireland-Online Limited" and had registered the domain name "Localireland-online.com" for its subscription business listing service.

With regard to the domain names, Local Ireland Limited claimed that the use of such a similar domain name by the defendant resulted in a loss of Local Ireland Limited's business and reputation, as Internet users were misled and confused.

The Court agreed that Local Ireland Limited had established that there was a high probability that users would be deceived into thinking that the services offered by Local Ireland-Online Limited were those of Local Ireland Limited, especially as the companies were offering similar services. Taking into account the greater length of time that Local Ireland Limited had been trading, the amount of money it had spent on the development and advertising of its website, and the reputation it had acquired in Ireland and abroad, the Court granted a temporary order preventing Local Ireland-Online Limited from using the domain name "Localireland-online.com" or the alternative domain name "Locallyirish.com", which Local Ireland-Online Limited had also registered.

The temporary order lasts until a full hearing of all the issues can take place. In Ireland, such a temporary order often serves as a final decision, and the parties often agree not to take any further action. However, in this particular dispute the parties were unwilling to do this, therefore a further and more extensive examination of the case is to be expected.