Lieze Czech – July 29th, 2021 – It frequently occurs that a company or trademark owner discovers that a third party has registered ‘their’ domain name that is the one corresponding to their trademark (or a very similar one). This is often accompanied by a proposal from the third party to sell the domain name for a very high price to the actual owner. This practice is called cybersquatting.
This article explains what you can do to prevent cybersquatting, and which steps you can undertake when it has occurred.
What is cybersquatting?
Cybersquatting is the act of registering, trafficking in or using a domain name in bad faith. Although domain names are cheap, they are sold on a first-come, first-served basis. Cybersquatters aim to profit from owning a URL that others will find desirable.
Cybersquatters usually focus on well-known brands but can also be competitors with the intention of preventing the trademark owner from growing on the Internet. The competitor redirects the domain name to its own website in order to take advantage of the brand’s image and attract the owner’s customers by creating confusion.
How to prevent?
Cybersquatting is legally punishable in Belgium (cf. Art.XII.22 Belgian Code of Economic Law).
However, it is better to prevent it by registering your domain name in advance and adopting an effective naming strategy. Here are some tips:
- Pre-register domain names
Cybersquatters often work by buying recently searched domain names, which they can sell later on at a profit. Therefore it is important to work quickly and efficiently. As soon as you finalize your company’s name, we advise you to register a proper domain name.
- Register your trademarks
Protect your trademark as early as possible and preferably before you actually start using it. If you can show that you are the registered (trademark) owner, it will be easier to challenge any domain name containing the name of your trademark (or a similar variation). Once you have registered your trademark, you will also be notified of anyone who seeks to register a similar name in the future.
- Build a portfolio of defensive domain-name registrations
Consider purchasing variations of your domain name. This includes common misspellings, other typographic errors and different extensions. This is considered to be the easiest and cheapest way of protecting your company and/or tradename.
- Make your name public only after you have taken the above precautions
If this is not possible anymore, we advise you to still arrange for trademark protection and an extensive domain name registration.
- Keep the company’s domain registration information current
Ensure regular control and monitoring of your trademark and domain names and act fast against infringers.
In the event of a domain name dispute
In Belgium there are different options to recover a domain name that is registered by someone else. Before you jump into action, it is important that you understand the law, your rights, and available remedies.
One of the first things to do is find out who the owner of the domain name is. This is possible through a site like WHOIS, if the information isn’t protected. This makes direct contact possible between both parties. It could be that the domain name owner would like to sell it to you. This is certainly worth considering if the asking price is reasonable.
If an amicable agreement cannot be reached, other options exist. The first option is the “alternative dispute resolution” (“ADR”) service provided by CEPINA (for .be domain names) or the “uniform domain name dispute resolution policy” (“UDRP”) provided by ICANN (for .com, .net and .org domain names). Note that the procedure under the last one only applies to conflicts between a cybersquatter and a trademark owner.
The second option is through the Belgian Courts under Art.XII.22 Belgian Code of Economic Law (for .be domain names and for other domain names if registered by persons with a residence or an establishment in Belgium). In that case, the complainant has to prove three things: (1) the domain name is identical or confusingly similar to a trademark, trade name, company name, personal name, etc.; (2) the domain name holder has no rights or legitimate interests in the domain name; and (3) the domain name was registered with the intention to cause harm to a third party or to obtain an unjustified benefit from the registration.
For .nl, .uk or other national domain names, you can go to the various national domain name registrars. However, the procedures and the cases in which you can invoke them vary widely.
The foregoing demonstrates the importance of a good domain name strategy and trademark registration. The time and cost of pursuing third parties for infringement action can quickly increase, as can the loss in income and reputation from letting such sites to continue trading unchallenged.
Our team will be happy to help you with
- Registering your domain name or trademark;
- Negotiating the transfer of a domain name;
- Conducting procedures in court or arbitration regarding domain names;
Feel free to contact us at firstname.lastname@example.org or at +32 11 281 280.