website name

bluelotus · Post by **bluelotus** » Tue Jul 05, 2016 8:49 am

Hello, it is me again

This time I have a question about a website name/trading name. I am planning to sell language video courses from a website called something like learngermanwithsusi. I am not sure if I have to register as a business if I do this, but if I do i would also call my "company" learngermanwithsusi. There are other people who have sites with very similar names, for example "learngermanwithania". Would that similarity be a problem?

AndyJ · Post by **AndyJ** » Tue Jul 05, 2016 6:47 pm

Hi bluelotus,
Although there are some rules about the linkage between registered company names and URLs, these mainly relate to things like cybersquatting. So for instance if you tried to register the domain name britishairways.fly, then British Airways the airline company could lodge an objection and would generally win any arbitration (the so-called domain name dispute resolution policy). The main reason why your attempt to register britishairways.fly would fail is because you would be unable to offer any valid reason for needing that domain name for your business.
However, say your real name was Patrick Power and every one knew you as Paddy, you would have a legitimate reason for wanting to register your window cleaning service as paddypower.clean, And Paddy Power the bookmakers would have a much tougher job opposing your use of your real name in this way.
Much the same kind of pragmatic approach can resolve the issue you have outlined. Where the URL is the genuine name of your company and you are actively trading under that name (which doesn't need to be registered in order to trade, but see here for more details on the rules about what can and can't be used as business names) that may constitute bona fide grounds for registering a similar URL to another company.
There are many reasons apart from the possibility of litigation for avoiding either a company name or a business name which could easily be confused with that of another company, not least that if you become more successful than them, you may lose customers to them due to the confusion.
And beyond the formal rules about what constitute valid trade marks or registerable company names, there is always the possibility that the other company could succeed with a claim of passing off, as happened in a 2006 Court of Appeal case about the name of a mobile phone company.

bluelotus · Post by **bluelotus** » Tue Jul 05, 2016 8:05 pm

The problem I have is that pretty much all tradenames already exist in some way, not matter what word I come up with, there will be someone else who is already using it in some way. For example, I thought about calling it "Starfish German Learning" but there is already a company called "starfish learning" (they teach completely different things but still, i guess the name is too similar?). So the only way to not be similar to anyone would be to create a completely new word, but even then there will be other "made-up" words used as business name that resemble it.
So how in the world does one find a name that is not taken up yet?

AndyJ · Post by **AndyJ** » Tue Jul 05, 2016 9:47 pm

Hi bluelotus,

I'll leave that last question for someone else to suggest an answer!

However, remember that you only have to avoid any existing registered trade mark if it is the same class as the area of goods and services you want to trade in. So assuming you are talking about teaching services, online, and translation, the classes most relevant to those services would be:

Class 41: Education; Provision of training; and cultural activities
and possibly
Class 45: Personal and social services rendered by others to meet the needs of individuals
and a real outsider
Class 35: Business administration; Office functions

There can be grounds to object to the same mark being used for dissimilar services but the opposer would need to demonstrate a high likelihood that confusion could occur. The less similar the two areas of activity, the stronger that proof would need to be. Someone making car parts would have an uphill battle trying to object to the same mark being registered in class 41, for instance. Where just words without any graphical representation are concerned, there is much more flexibility for a live-and-let-live approach, because as you indicate there are only so many words to choose from. Also bear in mind that words which are purely descriptive of the good or service - so in your example, 'German Learning' - will rarely be accepted as trade marks on their own, and so the strength of the mark lies almost entirely of the non-descriptive element, such as Starfish.

bluelotus · Post by **bluelotus** » Thu Jul 07, 2016 8:40 am

Thanks again so much for your response. Regarding the matter of â€œsimilarityâ€, how similar exactly can a name be before it is considered infringement? For example, in the world of language teaching there seem to be dozens of names built around the term â€œlinguaâ€ - lingoda.com, lingolia.com, golingua, lolingua, solingua, etc. They seem quite similar to me, yet apparently it is possible for these to exist next to each other â€“ do you think any of these names are â€œtoo similarâ€ to another name on the list? I heard somewhere that even the two names Magnavox and Multivox were in a court case considered to be â€œtoo similarâ€. Or is there a big difference between calling an URL and a company name? If I don't have an official company name registered, does my URL somehow automatically become my company name?

Coming back to your previous email, you mentioned that simply using your name is a good reason to choose a URL/tradename that is very similar to someone else. In my own case, if I used learngermanwithsusi.com, wouldn't that exactly be the case? â€œlearn german withâ€, would that not be considered â€œdescriptiveâ€? And susi is simply my name. So as I understand it, the â€œlearn german withâ€ part couldn't be protected anyways, and what is left over â€“ the name â€“ is not the same.
I am also wondering about these URL names that are basically ONLY descriptive, for example â€œlearngerman.comâ€ or â€œlearngermanonline.comâ€ or â€œhowtospeakgermanâ€, or â€œeasygermanlearningâ€ or something like this. Again they are often very similar yet many of these domains exist, are they all knowingly or unknowingly infringing or does the descriptiveness of the URL change the matter?Or what about the scenario of calling my website â€œsayitinGermanâ€, when there is already a website called â€œsayitinSpanishâ€?
As you can see I am a bit clueless. I am not too much worried about someone â€œstealingâ€ my name, I am more concerned about unknowingly chosing a domain/tradename that will later cause me trouble.

AndyJ · Post by **AndyJ** » Thu Jul 07, 2016 12:08 pm

Hi bluelotus,

I don't want to go too far off the main subject of these forums which is, of course, Copyright.

But I will try and answer your questions.

Don't get confused about the rules which apply to URLs and those which apply to company names. The former are fairly unregulated, and are in effect no more than an address similar in function to a postal address. Unscrupulous people realised early on that you could fool people into coming to their site by using a confusingly similar URL to some more famous or important site. This goes on all the time and often it is perfectly legal. The regulation of company names is much older and is enshrined in law. As you will know from the link I posted earlier in this thread, there is a distinction between a company name and a business name. Many high street 'names' are business names (or brands) but the name of the company which owns a particular store, such as, say, TopShop will not always be apparent to the normal consumer. Although, in the case of TopShop, since Sir Philip Green has been in the news recently, many more people will be aware that the major company behind TopShop is Arcadia Group Ltd.

So with that in mind, it is possible to have URLs which are confusingly similar (often this is deliberate) to company names or to other URLs. There are two places where disputes about URLs can be sorted out: first are the various less formal Domain Name Dispute Resolution panels (usually each top level domain registrar will have its own panel) and secondly, if things get more serious, the national courts can get involved, as with the Phones4U case I linked to previously.

It seems to me that what you are trying to do in selecting in suitable URL is to find one which describes what service the site provides, preferably in a memorable way. But because, as you have discovered, there are so many other sites with very similar names you run the risk that someone may misremember (or mistype) your URL and end up on a rival's site, which isn't what you want. Think about two very famous URLs: Google and Ebay. If you had never heard of them you would have no idea from their 'name' what service they provided. The reason they became successful was nothing to do with name as such, rather that they were catchy and memorable. Why do you think the well known DIY store B&Q chose www.diy.co.uk for its online presence? (incidentally, B&Q is yet another 'business name' rather than a company name).

On the specific point about using your real name. That only applies to trade marks, and it is not a 100% guarantee that you will be able to use your real name. Here's what the law says:

(2)A registered trade mark is not infringed byâ€”

(a) the use by a person of his own name or address,

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
(Trade marks Act 1994 Section 11(2))

So for instance if you decided to change your name to Dorothy Perkins just in order to open a women's fashion shop that looked remarkably similar to the existing brand, you would probably face a claim of passing-off, which is a common law matter quite separate from trade mark law.

I think you need to evaluate what you want your URL to do, and to a lesser extent what you want your company or business name to do. If you just want to improve your Search Engine Optimisation to ensure you get more new contacts coming to your site, there are better and more flexible ways of doing that. However if you want a catchy and memorable URL for people who have already heard about your site from some other source, does the URL actually need to say anything about the purpose of the site (remember the Google example)? If you intend to operate as a sole trader then you don't need any company or business name at this stage, as your own name effectively performs that function. Later on you may need to incorporate your company and that can be done using any company name you like which hasn't already been registered (in fact you can buy 'ready-made' company registrations if you want) and then simply use your chosen business name for branding purposes. There are certain technical conditions you need to fulfil (such as a notice in your business premises saying that you are trading as XYZ) but that can easily be sorted out later.

bluelotus · Post by **bluelotus** » Fri Jul 08, 2016 9:41 am

Changing my name to Dorothy Perkins so I can make that my website domain? Wait...that's a great idea!

Just kidding.
Thank you for explaining the difference between a domain name and a trademark. I did believe that using a "descriptive" URL name would help optimize search engine results but I can see your point that a "memorable" name would be more effective for getting traffic on the site. If I don't need to think about branding and company names at this stage, I will wait until a later stage with that - I am happy just to have a webpage and use my own name for the business and I rather spend my time developing and creating the content that I want to distribute.

AndyJ · Post by **AndyJ** » Fri Jul 08, 2016 7:32 pm

Hi bluelotus,

I have to be cautious about commenting on any terms and conditions when I haven't seen them in their entirety, but I think that based on the bit you have quoted, you should be OK. The terms clearly refer to use of the website, so if you didn't actually obtain your software as a download from the site, then those terms will not apply to the use of the software, and you can therefore rely on the reply you received from the company representative (which I am glad to hear was in writing). And even if the website terms did apply, the reply you got supersedes the terms, chronologically speaking, so you should be fine.

If you still feel unsure, why not ask for a copy of the actual EULA for your software, and see what that says. I would hope that it would say the same as the company rep namely that the software may be used for commercial purposes. If it doesn't and you paid for the software, you may well be able to ask for a refund, because you have been sold something which doesn't meet your needs, and the terms were not apparent at the time you bought the product, and are therefore unfair.

And term 8 on the website is totally unenforceable with respect to goods which you have bought or otherwise obtained legally. It may just be legal where a service is being supplied on a continuing basis (something like a household utility service) but you can't sell someone something and then subsequently change the terms concerning what may be done with those goods once they have legally become your property.

While it may appear that a EULA is something derived from copyright because it has the word licence in its title, all of this is, strictly speaking, a matter of contract law. It would be easy to dismiss EULAs and some of their more absurd terms as being little more than legal toiletpaper (here's what one commentator thinks of them), but since we are talking about installing on your computer software about which you will have very little idea of its ability to phone home or otherwise track your use of it, it pays to read the small print!

bluelotus · Post by **bluelotus** » Sat Jul 09, 2016 7:40 am

Hi Andy,

I had to remove the last part of my previous post since I realized that by posting excerpts of the terms of use on this forum I am actually violating these very terms of use

...or would this be considered fair use?

I did actually download the software from this website...the purchase and download link is located on this website. Does this then mean the terms of use apply to the software as well?

And what do you mean by "the reply supersedes the terms, chronologically speaking"?

I have already asked the owners about a proper license via email but no response so far.

AndyJ · Post by **AndyJ** » Sat Jul 09, 2016 10:33 am

Hi bluelotus,

Yes, quoting part of the terms and conditions would have been perfectly alright under the fair dealing exception for the purposes of criticism or review. You quoted no more than was necessary and you cited the source. Ironically that is the only part of this thread which actually involves copyright,

OK so the fact that you downloaded the software from the site does alter things slightly, as the terms, as I recall, were said to apply to anything downloaded from the site. Since downloading inevitably means a new copy is made of whatever it is (text, and image or software etc) then you do need the permission of the copyright owner, and hence those terms are effectively a licence to do so.

Again from memory, the wording said that these particular terms superseded any previous terms which may have been applied by the company. Hence the part about non-commercial use applied. However, you subsequently obtained clarification by email to the effect that commercial use was OK, so that later piece of information effectively amended the terms written on the website, because it came later.

Under contract law, the terms of a contract need to be agreed before the contract is completed, Generally this means that if the terms are both reasonable and usual for the type of transaction involved, the 'seller' (ie the first party to the contract who has made an offer to sell) does not need to make any special arrangements to bring any written terms to the attention of the 'buyer'. However where a term is unusual or might be considered unreasonable, the seller must bring this to the attention of the buyer before the contract is made. Failure to so so can result in the contract be voided if the term was material to the buyer's intentions. That is exactly the situation with the software you purchased. The law says you should have examined the EULA before making the download (there was almost certainly a notice somewhere on the website saying that you needed to do so) but, as you claim there was no EULA accompanying the actual download (the usual and reasonable method) you could not do this and so you sought clarification. This clarification came from, we assume, someone who was authorised to make a statement of the sort you received, therefore his representation can reasonably be taken to amend any pre-existing term which might have applied. If his representation was false (ie it is not the company's policy) and you rely upon it, then the contract may be voidable on this basis. This is the same as if you go to buy a car and ask the salesman if the car comes with air conditioning, and he says yes, and it subsequently turns there was no air conditioning on the model you bought, the facts have been misrepresented to you. In your case the representation came after the sale but the principle holds none the less, not least because your transaction was what is called distance selling ie you did not make the purchase face to face with the seller therefore you could not examine the goods or ask questions about the terms before the sale. This gives you additional rights in the form of a cooling-off period during which you can return the goods and get a refund if they turn out not to be suitable or you discover a fault with them which would have been obvious had you had the opportunity to examine the goods before purchase.

However once more I have to cut this thread short by re-iterating that a dispute about the EULA is not a copyright issue; it is about contract law. If you use the software for a commercial purpose and the company do object, despite the email you received, then their only recourse is for breach of contract, not copyright infringement, since you have not copied anything beyond the original download for which you had the explicit permission of the copyright owner.

bluelotus · Post by **bluelotus** » Sat Jul 09, 2016 1:34 pm

Hi Andy,

There was absolutely no notice about any EULA at the time of purchase nor is there such a thing anywhere on the website, i have invested a lot of time searching for it and couldn't find anything. I even re-downloaded the software to see if there is maybe a pop-up EULA before you can download it but no.

So basically, even though the written permission from the owner and the terms of use contradict each other (and the terms of use would apply to the software in this case), I would still be on the right side of the law using it commercially, since the written permission came later time-wise?

This whole issue seems to be very complex and even though you say they could only sue for breach of contract, it is still something that I will probably be worried about. I don't want to start this business already having legal complications.

I am going to try to get the owner to send me a EULA (even though he seems rather unresponsive but I can try), that should hopefully be enough to give me the rights for commercial use without any doubts, or would they need to amend their terms of use as well and include that they do not apply to the downloaded software? I have actually seen such clauses on other pages.

Thanks again for offering your knowledge, your advice and the very useful links so freely, it is very much appreciated.

Have a wonderful weekend!