LTJ & Partners: Internet Domain Name Vs. Registered Trademark

We will briefly analyze in the following the differences of legal protection from the perspective of intellectual property rights between the internet domain name and the trademark.

 (a) Internet domain name – can be obtained by registering with the TLD (Top-level domain) assigned by a D.N.S. (domain name system), for example:

– country code (ccTDL- country code top level domains – in a national register), in Romania is organized by the National Institute for Research and Development in Informatics (NIRDI-Bucharest), which was delegated by IANA (INTERNET ASSIGNED NUMBERS AUTHORITY) as a “.ro” domain administration register (RoTLD-rotdl.ro register), registration that can be obtained directly or through accredited partners (provider),

– generic top level domains (gTLD) is the organization of Verisign Inc. of Mountain View, California, which operates “.com”, “.net” registers.

The usefulness of an internet domain name consists in the fact that it allows the creation of applications such as web page (web-site), e-mail addresses but also the location of the computer connected to the internet network as well as the identification of a website.Name registration applications are automatically processed by a registration robot that checks the list of already existing domain names and automatically sends an e-mail notifying the applicant if his domain registration application has been accepted or rejected. The registration of the domain name gives the applicant a right to use it.

During the domain name registration procedure, according to the draft contract for registration, displayed on the ROTDL website, the following are mentioned:

“We cannot and do not verify that the domain name you select, or the use of the domain name, violates the legal rights of other parties. We insist that you investigate whether the selected name or its use violates the legal rights of other parties. You can consider one or more trademarks of your domain name in connection with the domain name you wish to register. You should be aware that we may be asked by a court to cancel, change or transfer the domain name. “

Thus, right from the moment of starting the registration of an internet domain name, the applicant is informed that this procedure does not confer legal protection of some intellectual property rights, as is the case in a trademark registration procedure, but only a right of use of an Internet domain to communicate (make public) information about economic activities in the Internet space.

(b) Instead, the Trademark (which may contain the domain name – the verbal elements of the domain name – in whole or in part), which may be registered with the profile authorities, depending on the territory / geographical area for which its protection is desired, it gives the holder an exclusive intellectual property right. 

(c) Both in the jurisprudence of the E.U.C.J. as well as in domestic judicial practice it was retained, in essence, that the domain name represents a “sign” (ie a keyword).

The difference of the rights obtained by registering a trademark, compared to the registration of a domain name, consists in the fact that the trademark owner has the possibility to ask third parties, and in case of refusal to comply, directly to the court or arbitration court, to prohibit the use of the name of the domain that is identical or similar to its brand.

Such requests are allowed, usually if the domain name is used in their commercial activity, without the consent of the trademark owner and if the products or services sold through the website are identical or similar to those for which the trademark is protected, motivated by the fact that a risk of confusion in the public’s perception, practically, a risk of association between the sign- domain name and the brand.

Therefore, just the registration of the domain name in the TLD register is not enough for the owner of the internet domain to benefit from its legal protection from the perspective of intellectual property rights and it is necessary to be registered at specialized offices, where its protection is desired, for example : OSIM (State Office for Inventions and Trademarks), EUIPO etc.

(d) The risks of non-registration of the domain name through the trademark registration procedure are, in essence, at least two:

– after the registration of the domain name, a trademark with a name similar to the domain name is registered in bad faith, in which case the owner of the domain name could be put in a situation to suffer damages by using a trademark by that owner (practically embezzling clients formed as a result of using the website),

 – if the domain is registered after the registration of a trademark, but is used with the functions of a trademark, it is possible to be requested by the owner of the previous trademark, either the cancellation of the domain name or its transfer to the owner of the earlier trademark, even in case in which the domain name was registered in good faith.

(e) Dispute settlement procedures between a domain name and a trademark may be conducted both arbitrarily and judicially, but the time period may vary from a few months, in the case of arbitration, or a few years, or the case legal proceedings, and the costs are consistent, starting from a few thousand euros.

In international jurisprudence, applications requesting the transfer of a domain name to the applicant (usually the trademark owner) are largely admissible if it is found that the domain name has been registered in bad faith.

An example of a dispute between an internet domain name and a trademark is the case by which the company G4S, based on previously registered trademarks containing the phrase “G4S”, requested and obtained the transfer of the domain name <g4sonline.com>, registered by a third party, in his favor, in a case settled in January 2021 by WIPO- Arbitration Center.

In conclusion, in the current context in which the development of contractual relations (sale of goods or provision of services) through the “on-line” mode has increased significantly, the more there is a risk that a domain name (web page) will conflicts with an earlier or even later mark, given that identifying such situations is much easier nowadays. 

Therefore, the owner of a domain name benefits from a protection from a technical point of view, but in order to benefit from a legal protection of intellectual property rights, it is necessary to go through the procedure of registering a trademark at the profile offices. 

Cristina Ticu-Jianu, Partner

cristina.jianu@ltj.ro

Cristina Valcauan, Trademark Attorney

cristina.valcauan@ltj.ro

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