16.05.2023
Companies need to look after their domain names as well as other intellectual property rights, reminds Kolster’s expert.
In protection against cybersquatting, everything is based on a registered trademark. It is therefore easiest and most cost-efficient way to tackle cybersquatters and cyber-criminals. It is impossible to register every imaginable version of one’s trademark as a domain name because of the unlimited number of different variations that can resemble a company’s name or trademark.
The protection of a trademark starts from its filing – if an infringing domain is registered later, the trademark owner has earlier rights in respect of the domain. However, in some situations even domain names that have been registered before a trademark has been filed can be transferred to the trademark owner.
Domain disputes are on the rise
Criminality in the cyberspace is expanding fast and domain names are key in making this possible. This is evidenced by the statistics of WIPO: while about ten years ago WIPO handled some 2000 cases per year, in 2022 case numbers exceeded 5000.
A growing trend is that someone registers an infringing domain name and activates its MX-records so that the domain name can be used to send scam e-mails. Another typical case is that someone sets up a mock website collecting personal data from example persons who send in their resumes thinking that they are looking for a job with that particular company.
While the proper company has nothing to do with these activities, it nevertheless easily harms that company’s reputation.
When a company becomes aware of such infringing activity, it is important to contact an IPR-specialist as soon as possible. There are fast remedies available, such as the UDRP and the URS. While in a UDRP proceeding the domain name can be ordered to be transferred to its rightful owner, in URS proceedings the website can only be taken down and the domain name frozen until the end of its registration period. Also, URS only applies for so called new gTLDs, while UDRP applies to all generic top level domains and to many country-specific domains, too.
For more information, please do not hesitate to contact us.
Article last updated 24.5.2024
