7.28 Even if a trade mark check were to show the existence of a registration for a name that is identical or similar to a domain name which someone was thinking of registering, it would not necessarily be a reason for refraining from registering the domain name. The ability of a trade mark owner to prevent the registration and use of a domain name by way of an infringement action depends on many things including the scope of the specification, the extent of use of the mark and the way in which the defendant is using the domain name.
7.29 Similarly, there has never been any duty on domain name registrants to conduct ‘common law’ checks of publications such as Yellow Pages or trade directories or to perform internet searches to see whether anyone might have rights in a name similar to the domain name. To suggest that the Respondent should have done so in this case is to impose a burden that is contrary to the way in which domain name registration practice has developed to date. While there may be specific circumstances in which one might conclude that it would have been prudent to conduct such checks (for example, if a registrant had noticed a thriving business conducted under a name that he wanted to register as a domain name, but chose to turn a blind eye), that is not the situation here. On the contrary, the name concerned was a descriptive one in which people would not necessarily assume that rights could be acquired and, on the evidence, the Respondent had not seen it in use.
