Issue 38

The Online Battle: Brand versus Internet Domain

Claudia Jelea
Avocat & Consilier in domeniul marcilor
@IP Boutique

If you are wondering what the relevance of this subject in the IT domain is, here are three aspects that are worth thinking about:

• The brand strategy in cyberspace should be on the agenda of any company that wants to develop in the digital era.
•  Most businesses in the IT domain "lead their life" mostly in the digital world - therefore, they should be interested in how they can use their domain names and brands on the Internet.
• Changes happen quickly on the global level, and companies must adjust to them. For instance, nowadays, we are witnessing an unprecedented expansion of domain names - the new gTLDs (generic top-level domain names). In the near future, domains such as .tech, .software, .technology, .game, .SRL, .online, .web, .site or .website will be very common, representing a great risk of conflict for the companies that are active in IT and online. 

Thus, it is prudent that you be informed regarding certain risks and protection mechanisms. 

Why are there conflicts between brands and domain names? 

Conflicts emerge, mainly, because of the risk of confusion among clients. 

Even though domain names are, just like brands, registered on the principle "the first to arrive, the first to be served", they do not offer the same level of protection as brands do. Actually, most of the times, it is considered that the rights of the owner of a brand can be affected if somebody else registers an Internet domain name which contains a name that is similar or identical to that brand. 

There are cases, not few, when - if you are not sufficiently active in the online environment - you might find out that your brand is already being used in somebody else's domain name. This "somebody else" may be a cybersquatter (who registers in ill-faith some domain names containing registered or notorious brands, with the purpose of re-selling them afterwards, to an advantageous price) or even a business man who, in good faith, sells products or renders services (that may be in competition or not). 

Until recently, "the battle" was generally on the .ro and .com extensions. But in the context of the emergence of the new gTLDs, which I have mentioned above, the disputes between brands and domain names will most probably increase exponentially and they will be more and more complex. 

What can be done?

If you are the owner of a registered brand and you care about its unicity and exclusivity, you will surely want to prevent another person from using an Internet domain that reflects your brand, especially if the respective domain can be your competition or if it hinders you from extending your activity in another geographical area. 

If you have monitored it and you have found out there is such a domain, try - as a first step - to contact the person who had registered it and take it over, in an amiable way. It is important to point out persuasively the rights on which you are basing your request. 

If you do not succeed in this first step, you can move on to a formal stage. Usually, the procedure depends on the type of the extension (.ro, .eu, .com, new gTLD, etc.) - you can either opt for an arbitration or mediation procedure (for instance through WIPO Arbitration and Mediation Centre) or for an action in the court of law (which may consume more resources). However, in these cases, if you want your rights to be properly protected, our recommendation is to turn to specialized legal advice. 

For example, one of my clients, a Romanian IT company, owns both a national brand, as well as a community one - reflected in the respective domains .ro and .com. Planning to extend its activity to Great Britain, the client wished to also register the corresponding domain .co.uk, but found out that it was already registered by a British citizen. The domain was inactive. My client appealed to the mediation procedure offered by Nominet UK (the British correspondent of ROTLD) and, following the reasons we invoked, he quickly and amiably obtained the transfer of the domain, in exchange of a price reasonably negotiated.  

If you have registered a domain which includes a name that is identical or similar to another person's brand, the strategy depends also on the actual manner in which you use the respective domain. It can usually be to your advantage if you have or not a legitimate interest in using it - for instance, on that web domain, you have developed in good-faith a service or product that you offer your clients, etc., if you have previous rights on that name (for example, your own brand or the name of your own company), etc. 

Therefore, in case you have received a notification from the part of the owner of a brand, who requests (in a threatening manner or not) the transfer of the domain, one of the first things you should do is turn to an expert to analyze your situation and evaluate the chances you have in order to be able to keep the domain. 

Remember the fact that the situation is always analyzed from case to case, and the analysis is not always simple. Do not make the mistake of giving up your domain immediately, before getting a specialized opinion; you might be surprised to find that you (too) may be entitled to it. A few months ago, a client from the online area, asked me to check a name he wanted to use in his new domain. Before contacting me, he had received a formal notification from a company in Germany which owned a community brand (thus, protected inclusively in Romania) and demanded the immediate transfer of the domain. The client got scared and accepted the transfer, opting for a re-branding and the pertaining costs, without asking for an expert's opinion. Understandably, in the case of the new domain name he registered, he was diligent and looked for help. But, unfortunately, he also found out that he had a strong case to keep the initial domain he had given up. 

A few words on the new gTLDs

Concerning the new gTLDs, you can find here an infographic drawn by the Internet Corporation for Assigned Names and Numbers (ICANN) regarding the manner in which owners can protect their brands in the online environment, following the "revolution" of the new domain names (for example, by registering in the Trademark Clearinghouse). 

Trademark Clearinghouse is a centralized database (made available by ICANN and managed by Deloitte and IBM), where owners can choose to include their brand during the Sunrise period and register the pertaining domains. The brands, after being validated, have priority to the registration of the new gTLDs, and the owners of the brands are notify when a third party is trying to register a new gTLD that includes the respective brand, thus, avoiding the unpleasant situations when they have to fight in order to regain the respective domain. 

You can check the status of any new gTLD by accessing this link . And if you wish to find out more details about the .tech domain, you can view this presentation

In conclusion, who gets to win in the conflict between brands and domain names? I would dare say that, in general, the winner is the owner who is best informed and who better knows his rights and knows how to use them to his own advantage. 

I would say that, in the future, the new domain names will generate rather serious problems for the owners of brands. The companies, including those in the IT industry, which are offering services and products available in several geographical areas, must adapt to the new picture created by the interference between brands and domain names and focus more on their legal strategy in the online environment. But it is important to remember also that there are always options to solve the conflictual situations resulted from using the brands and the domain names. It's up to you to choose the one that is most appropriate to the actual situation you are dealing with, and this thing is possible only if you are well informed or correctly advised on time. 




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