The average annual growth is increasing with 2,4% in comparison with the previous year. At first glance choosing a fitting domain name might seem as a simple task but in reality there are numerous risks in relation with trademark infringement and collisions with identical domains.
Domain names are divided on 2 types- Top Level Domains (TLD)- .com, .org, .net, etc. and Second Level Domains (SLD)- the symbols in front of the Top Level Domains.
Mycompanyname- SLD; they need to be unique in order to be distinguished from other domains
.com- TLD; indicates the area in which the domain is registered; A top-level domain recognizes a certain element regarding the associated website, such as its objective- business(.com), government (.bg, .us), and different others (.edu, .org, .biz)
Disputes arise most commonly in relation with Second Level Domains
When a SLD domain is identical or similarly close to a trademark the trademark owner has legal remedies in his disposal to protect his domain. The parties can always take the dispute to the court but that is relatively rare in practice because the judicial process is notoriously slow.
One of the alternatives to pursuing a domain name dispute through the courts is to take advantage of the domain name dispute policies by the organizations that assign domain names. The Uniform Domain Name Dispute Resolution Policy(UDRP) is used as arbitrary procedure by ICANN. This Policy is used by all accredited registrars. Under this new policy, a trademark owner can initiate an administrative procedure to challenge the existing domain name. The initiator must present evidence that:
• He owns the trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name
• The other party that registered the domain name has no legitimate right or interest in the domain name
• The domain name was registered and used in bad faith
A domain used in bad faith is present when it is registered with intent to be later sold to the legitimate trademark owner for a price much higher than usual or when the identical domain is used for generating traffic and income from misled users.
Using ICANN’s UDRP
Apple has successfully claimed 16 domains from cyber squatters- read more here. In its decision the National Arbitrary Forum(NAF) concludes that the used domains are misleading because they contain generic keywords followed by the name of the registered and well-known brand Apple (blueipod.com, iphonecheap.com, etc.). They were exploited for generating incomes with click-through fees from links of Apple’s competitors. With similar decision from the National Arbitrary Forum(NAF) the world leading social networks Facebook and Instagram win the rights to 46 domains similarly close to their registered domain names and trademarks. The reason behind the filed complaint was also use in bad faith and with intent for commercial gains.
The Bulgarian legislation provides relatively good protection against such domain collisions and abuse.
The Law on Protection of Competition contains a provision prohibiting (Article 35/3/) the use of domain or webpage interface that are identical or similarly close to those of other natural or legal persons in way that might lead to misleading and/or harm other competitor’s interests.
Trademark owners can invoke the application of article 12 from The Marks and Geographical Indications Act against any danger from imitation, consumer misleading and unfair advantage.
Recommendations for avoiding collisions and disputes
For minimalizing the legal risks of collisions between domains and trademarks it is suggested:
• Using generic keywords that are not subject to branding and describe the activity of the website’s owner (Example: HomeBuilding.com, etc.);
• Initiating preliminary research for already existing and registered trademarks or identical domains;
• Registering more than one and by chance similar and related domains in order to minimize the risk of getting your domain claimed
Additional practical tips can be found here and here [/url]here. (http://1legal.net/bg/blog-read39-domains-protection-again-and-again)
To protect your domain and trademark from infringement or from domain collision, do not hesitate to contact us here
1Legal.Net Blog © 2018
Materials published on this blog are copyrighted. No part of them can be copied or used without the express permission of the author.