Reinier advises national and international companies
reinier.russell@russell.nl +31 20 301 55 55A trademark or trade name holder can take action against domain names that include their name or trademark. This way you can claim to become the holder of the ‘hijacked’ domain name. You can also claim compensation for the damage suffered.
Registration and use of a domain name is easy and a smart move in the present time. What should you as trademark owner, trade name holder or registrant pay attention to?
The Internet is accessible to anyone. Starting an online shop is therefore attractive. Online, goods and services can also be offered (inter)nationally. When registering and using a domain name you must take into account that trademarks and trade names are protected. This means that their holders can take action against domain names that contain their brand name or trade name. What exactly is the situation?
A brand or a trade name have something in common, they are known to the public.
A trade name is the name under which a company is run. A company can have several trade names, think for instance of ‘KLM’ and ‘Koninklijke Luchtvaart Maatschappij’. Trade names are protected as soon as they are used in the course of trade. Filing or registering a trade name is not mandatory.
A trademark however is only protected when it is registered in the trademark register. Trademarks serve to distinguish goods or services from those of other companies. Think for instance of the large yellow letter ‘M’, a large audience will recognize it and know it stands for McDonald’s.
First of all, unjustified (financial) advantage is taken of the brand’s or trade name’s reputation. In addition, the distinctive character of the trademark and trade name may also be impaired. The distinctive character makes sure that the relevant audience can trace back the origin of the products to the brand or trade name. It can also cause reputational damage if, for example, the domain name is used to sell brand pirate products instead of the brand’s quality products.
As a trademark holder or trade name holder you can take action against domain names registered or used in bad faith. That this is the case can be deduced from the following circumstances:
Unfair competition: The domain name was or is being used to gain commercial advantage by leading Internet users to a different website of the domain name holder or another online site. Using the brand name or trade name may cause confusion, so that the audience thinks that the website is hosted by the trademark owner or trade name holder.
Domain name grabbing: The domain name was mainly registered or obtained to sell, lease or otherwise transfer it to the plaintiff or a competitor for a much higher amount.
Interference: The domain name was mainly registered to prevent the plaintiff from using it or to interfere with the activities of the plaintiff. An indication of this is that the registrant has a large number of domain names, which are very similar and hardly ever used.
Typosquatters: They make use of typing errors, for instance russel.nl instead of russell.nl. If you type the wrong letter, you will end up on another website. Sometimes these are websites that spread malware or look like the site of your bank, for example (phishing). This is annoying for the users and can damage the reputation of the ‘real’ companies (without typing errors).
However, it is also possible that the trademark is used in good faith in the domain name. The registrant may prove his own right or legitimate interest by invoking the following circumstances, among others:
If there is one of these circumstances, it does not mean that the claim will be rejected by definition. It is only an indication that the registrant has a legitimate interest in the domain name.
The plaintiff can choose between legal proceedings or the Dispute Resolution System for .nl Domain Names. If you choose the Dispute Resolution System, you can submit a request for change of domain name holder to the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO), so that you will become the registrant. No damages or legal costs can be claimed in this instance.
If the use of a domain name is unlawful, you may suffer damage as a result. This can be the case when a domain name is hijacked or when the domain name holder does not use his website as a trade name, but does cause confusion with his domain name. You can submit a claim for damages to the court. Of course, you must then be able to prove that you have suffered damage and what the extent of this damage is.
Do you want to take action against a domain name that contains your company name? Do you have questions about domain names? Please contact us:
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