Domain Name Watch – why monitor your domain?

Why monitor new domain registrations?

Keeping track of whether your trade marks are registered as domain names is essential when it comes to building a strong trade mark protection strategy. Being aware of new domain registrations that are identical or confusingly similar to your trade mark is crucial to be able to react swiftly. In some cases, the domain name may be used for phishing, relying on your trade mark’s reputation to confuse Internet users, which requires quick action to stop the domain holder from causing further harm; in other cases, arbitration procedures that can be used to dispute a domain name’s ownership are only available for a certain time after registration of the domain name.

How to assess if a new registration constitutes a trade mark infringement?

Trademark infringement is sometimes crystal clear. But in most cases infringement is constituted by a combination of factors.

The most evident cases of infringement are cases where the domain name is used in bad faith: either on the website (trademark infringement, phishing website, sell of counterfeiting goods…) or via email (fraudulent email scheme, sometimes including identity theft). These types of infringement show clearly that the domain name registration targets your trade mark.

If there is no clear evidence of bad faith use (cases where the domain name points to a blank page), the domain name registration itself might still be seen as trade mark infringement, if it is possible to prove that the trade mark is being targeted on a balance of probability. Corroborating evidence include amongst others the trade mark holder’s location, the reputation of the trade mark, the degree of distinctiveness of the trade mark.

How to react if the domain name registration is infringing upon your trade mark/other rights?

An initial investigation performed by a trade mark attorney is recommended, contact us for help. The aim of the initial investigation is to find out whether the new registration constitutes an infringement of your rights and to determine which remedies are available. There are usually several possibilities of action.

• Request for takedown of the content and/or a suspension of the domain name
• Send a cease-and-desist letter to the domain name holder
• Start an arbitration procedure to claim better right to the domain name
• Contact the domain holder anonymously to try to acquire the domain name
• Place a snap-back order on the domain to register it when it expires or is cancelled
• Monitor the content of the webpage associated with the domain to see if the content changes to something that is actually infringing upon your trade mark rights
• Ignore the domain name