Domain names: what sort of rights do you actually have?
For many businesses, the domain name constitutes their digital identity. After all, it is through that name that the website – and therefore the business – can be found and accessed online. However, registering a domain name does not always provide the legal protection that business owners expect. What happens if you register a domain name that closely resembles an existing one? Are you free to use that domain name, or do you run the risk of being forced to stop using it? In this article, I outline the key legal aspects for you.
Not an independent IP right
A domain name does not fall within the scope of traditional intellectual property rights, such as copyright, trade mark law and patent law, nor is it protected as such by any specific legislation.
Anyone who registers a domain name acquires a contractual right: the right to use that name for as long as the registration with the registrar (for .nl domains, usually SIDN) remains in force. Whilst that registration is valid, a third party cannot register the same name with the same extension. Please note: with a different extension (for example, .com or .eu), this is indeed possible.
Nevertheless, in practice, a domain name is often regarded as a form of intellectual property right, as a domain name usually contains a company’s trade mark or trade name. As domain names are allocated on a ‘first come, first served’ basis, it is not uncommon for someone to register a domain name that infringes a third party’s trade mark or trade name rights.
By invoking those rights, action can be taken against the use of an identical or similar domain name by a third party, even if that party uses a different extension (for example, flib.nl versus flib.com, or flib.nl versus flips.nl). It is therefore not the domain name itself that is protected, but the trade mark or trade name used within it.
Relationship to trade mark and trade name law
Trade mark law. If you use a competitor’s trade mark in your domain name, the competitor may prohibit such use in the following two situations, amongst others:
- The domain name is identical to the competitor’s trade mark, and the website behind it offers the same products or services as those for which the competitor has registered the trade mark.
- The domain name corresponds to the competitor’s trade mark, and the associated website offers products or services that correspond to those for which the competitor has registered the trade mark, thereby causing confusion.
Trade name law. Are you using a competitor’s trade name or a name that corresponds to it as a domain name? Are you actually operating your business under that name, and is there a risk of confusion? If so, the competitor may be able to prohibit this under trade name law.
Unlawful domain name registration
In certain circumstances, a domain name registration may in itself be unlawful vis-à-vis a third party, irrespective of any reliance on trade mark or trade name rights. Well-known examples of this include cybersquatting and typosquatting.
Cybersquatting is the collective term for the registration of domain names that correspond to other people’s trade marks or trade names, usually with the aim of profiting from them. This is done, for example, by redirecting the domain name to one’s own website, or by subsequently offering it to the trade mark or trade name owner at a high price.
Typosquatting is a specific variant of this: the registration of a domain name that contains a minor spelling error compared to a well-known domain name, usually to capitalise on typing errors made by internet users.
Enforcement options
Action can be taken against an infringing or unlawful domain name in two ways.
1. Civil court
Is there a trade mark or trade name infringement, or some other unlawful act? If so, the court may prohibit the domain name holder from (further) using the domain name and, in some cases, order its transfer. It is also possible to claim damages. The disadvantage is that proceedings before the civil court can be lengthy and costly.
Interim relief proceedings before the judge in summary proceedings are also an option. Whilst this does offer the possibility of taking swift action, only provisional measures can be sought in such proceedings, such as a (temporary) ban on the use of the domain name. Compensation or the transfer of the domain name cannot be claimed in summary proceedings; this requires proceedings on the merits before the civil court.
Please also read my previously published article for more information on summary proceedings and proceedings on the merits before the civil court.
2. Alternative dispute resolution (UDRP)
In addition to the civil court, there is the option of out-of-court dispute resolution, established as a faster and cheaper alternative. Which procedure applies depends on the extension of the infringing domain: in many cases, this is the UDRP (Uniform Domain-Name Dispute-Resolution Policy), for which WIPO can usually be approached as the dispute resolution body. For .nl domain names, the UDRP does not apply; instead, the SIDN Dispute Resolution Procedure for .nl domain names applies: an independent procedure established by SIDN which, although modelled on the UDRP, has its own rules and, like the UDRP, is administered by WIPO. A disadvantage of both procedures is that their scope is more limited than that of the civil courts: only the transfer of the domain name can be sought, not an injunction against further use, a penalty payment or damages.
To effect the transfer of the domain name via this route, the following three conditions must be met cumulatively:
- the domain name is identical to, or so closely resembles, an earlier trade mark and/or trade name right that it is likely to cause confusion;
- the domain name holder has no rights or legitimate interests in the domain name; and
- the domain name has been registered or is being used in bad faith.
Please note: not every dispute resolution scheme recognises trade name rights as a basis for this. The SIDN Dispute Resolution Scheme recognises trade name rights as well as trade mark rights, whilst the UDRP at WIPO recognises only trade mark rights as a basis.
The choice between civil court proceedings and alternative dispute resolution depends heavily on your specific situation and the objective you wish to achieve. If a swift, cost-effective and, where appropriate, provisional solution is the main priority, then the UDRP and, for .nl domain names, the SIDN Dispute Resolution Procedure offer a solution. If, in addition, you are seeking an injunction, a penalty payment or damages, or if the case involves a broader infringement of trade mark and trade name rights that is not limited to the domain name, then civil court proceedings are the more obvious choice. A combination of both procedures is also possible. You should therefore always consult a specialist.
Questions
Do you have any questions regarding this article? Our solicitors are ready to advise you! Contact one of our solicitors via email, by phone or fill in the contact form for a no-obligation initial consultation. We are happy to help you find a solution.
