Bram de Vos
Legal Advisor
Disputes on domain names, trademarks or trade names occur regularly. Even if the domain name is registered and used in good faith. Do you need advice on claiming or defending your domain name? Legal ICT can assist you with this.
A trademark proprietor can oppose any commercial use made of its trademark, if there is a likelihood of confusion about the party behind the domain name or the products or services offered under that name.
Speed often is of the essence for transferring or claiming a domain name. Hence, an alternative has been developed: arbitration. Domain names are administered by SIDN (for .nl domain names) or ICANN (for .com, .net, .org and other international domain names). These organisations require domain name users (and their providers) to cooperate in special arbitration proceedings for domain name disputes.
Under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), a party that believes it has a greater right to a domain name may file its claim with the arbitration committee at the World Intellectual Property Organization (WIPO) or the National Arbitration Forum.
Legal ICT has many years of experience in claiming and defending domain names on the basis of trademark rights, trade name rights or other grounds. Ask for expert advice if you wish to institute proceedings, or are confronted with a claim on your domain name.
Companies with a well-known trade name or brand name register it as a domain name. When it comes to domain names, you can come up against various situations that we would like to explain to you.
A domain name is nothing more than the address of a website. In technical terms: a name that is linked to an IP address via the DNS (Domain Name System). While anyone can register a domain name, this is subject to the ‘first come, first served’ rule.
In practice, all aspects relating to applying for, moving or cancelling domain names are governed by contracts between SIDN or another registry (e.g. VeriSign for .com domain names), the applicant/holder of the domain name and the registrar (the intermediary who registers the domain name with the registry).
Domain name by name
One of the ways to register a domain name is through your hosting company. The hosting company will then conclude a contract with SIDN and the domain name will be registered to your company. Web developers can also register a domain name. If you are a web developer, you can obviously do this on your own behalf, but also for your customers. It is important that clear agreements are made about this. As a web developer, are you going to you register the domain name to your company and grant the customer a right of use, or register the domain name directly to the customer? These are important questions in the event of a dispute. Control of the domain name rests with the party to which the domain name is registered.
Moving to another registrar
As the holder of a domain name, you are at all times entitled to move the domain name to another registrar. As a registrar, you are obliged to cooperate with this, even if you are still receiving money from the domain name holder.
It gets tricky when a defaulter tries to quickly move their domain names to another hosting company. SIDN prohibits its registrars from blocking a move, no matter for what reason. This is because the domain name holder remains entitled to dispose of the domain name under their agreement with SIDN, and therefore remains entitled to move it. Of course, as a registrar, you will then have a claim against your defaulting customer.
If you own a domain name and you want to move it to another registrar or even to another domain name holder for whatever reason, you need a token (your identification number). Your current registrar has the token and is obliged to provide it to you within five days of your request.
Problems may arise in this process. For example, your current old registrar may refuse to issue a token or may no longer be reachable. In that case, you as the domain name holder can contact a new registrar, who can then request the token from your old registrar. If that doesn’t work either, you can request SIDN to make the token available.
Anyone who believes they have a claim to a domain name can take legal action. But trademark holders have a faster alternative: arbitration or dispute resolution through the registry (such as SIDN in the Netherlands). This provides a binding decision on who is entitled to the domain name within a few weeks.
A trademark or trade name holder can take legal action for trademark infringement, demanding to have the domain name registered to their company. If the court upholds their claim, they can take this judgment to the domain name registrar to demand that the domain name be transferred to them. The current holder can then no longer oppose this: the judgment forces them to consent to the transfer.
However, all this can be done much faster and more efficiently through the arbitration or dispute resolution system offered by most domain name registries. Arbitration is an alternative to litigation where an independent third party – the arbiter – makes a decision that is binding on both parties, who must declare their agreement to this in advance. The arbiter’s decision is not open to appeal.
Claiming domain names through arbitration
Arbitration is form of dispute resolution that provides a practical way to claim a domain name. It is quite similar to a ‘normal’ court case. An independent expert examines the dispute and then makes a decision that is binding on all parties. Arbitration is offered by most registries. SIDN offers it for .nl domain names and the WIPO for .com domain names.
Claiming domain names through a demand letter
If an informal message does not have the desired effect, a domain name can be claimed through a demand letter. Transferring a domain name takes time, money and effort. The transfer of a domain name can be demanded by various means, which differ in terms of their costs and results. Making a simple phone call or sending an email to request the transfer of the domain name is the easiest way.
If an informal message does not have the desired effect, a domain name can be claimed through a demand letter. The advantage of a demand letter is that drawing up and sending such a letter is relatively inexpensive. The disadvantage, however, is that nothing can be enforced with a demand letter. If the demand letter does not have the desired effect, another means must be used.
A domain name can be defended on various grounds. In procedural terms, you have the option to submit a statement of defence in case of arbitration proceedings, or to defend your case before a civil court. But what is practically feasible?
If you have no right to or legitimate interest in a domain name, there is basically no point in defending the domain name. In court or arbitration proceedings, you will lose the case and lose the domain name.
However, you may well have a right to or legitimate interest in retaining the domain name, for example because you sell trademarked products, or because you have been using the domain name as a trade name for longer than the claimant.
If you believe you have a right to the domain name, you should never hand it over just because this is demanded in an angry letter. Ask a lawyer to thoroughly inform you about your options. Simply sending a reply to a demand letter can have the desired effect. If the claimant realises there is no point in pursuing further proceedings because you have a legitimate interest in the domain name, that may put an end to the matter.
The transfer of domain names can be achieved by means of dispute resolution procedures or demand letters. However, parties also quite often manage to agree on a transfer of the domain name. No quarrel, no conflict, just an agreement reached in good consultation. Nevertheless, it is still important to arrange this properly.
The registrar must be informed of the name change, as the registrar is required to notify SIDN or a similar body that the domain name holder has changed. The transfer only takes effect when this has been done.
When entering into a purchase agreement, parties can also attach consequences to a failure to transfer title to the property. With a domain name, transfer of title means transferring the registration of the domain name. The buyer can be given the option to cancel the purchase if title to the property is not transferred. However, this is not a satisfactory outcome, as you want the domain name. Therefore, it can be stipulated in the purchase agreement that the acquiring party is given a power of attorney to transfer the domain name.
To arrange these matters properly, it is advisable to arrange the transfer by means of an agreement. Such an agreement can prevent unpleasant problems by simply putting things on paper.
If your company is in financial difficulties, you can pledge property. Pledging means that a third party (the pledgee) lends you an amount in return for the right to take possession of the property and sell it if you do not repay this amount. This right is important in a bankruptcy, for example, where the pledgee will rank before other creditors. The pledgee may then claim the pledged property and the bankruptcy trustee must cooperate with this.
Domain names can be pledged. For this purpose, you and the pledgee must first draw up a deed of pledge and register it with the Dutch Tax and Customs Administration. You must then inform SIDN, which will register the pledge in its system. From that point on, you will no longer be able to simply transfer or cancel the domain name, as this will require the pledgee’s consent. You will still be able to change registrars, provided that the domain name continues to be registered to the same holder.
A pledge must be registered with the Dutch Tax and Customs Administration, otherwise it will not be legally valid. And provided that the pledge has not been reported to SIDN, you will still be able to transfer or cancel the domain name.
A domain name can be worth money. Therefore, a party to whom a domain name holder owes money can have the domain name attached through the competent court. The domain name may then no longer be sold or cancelled. Provided that this party subsequently submits a case against the domain name holder within a certain period, the court will then render its final judgment on the domain name.
Bailiff
Attachment of a domain name is possible, although in the past there was some discussion about this among lawyers because a domain name does not qualify as ‘property’ under Dutch law. But in practice this is no longer a problem. If the court holds that the attachment is justified, the claimant can send a bailiff to SIDN. SIDN will then freeze the domain name, meaning that it cannot be sold, transferred or cancelled until the attachment is lifted or it lapses because no case was submitted to the court within the applicable period. Transferring the domain name to another registrar will still be allowed.
Initiating a transfer
In addition to this pre-judgment attachment, the court can also grant a post-judgment attachment. If someone does not voluntarily comply with a judgment, this form of attachment can be used to enforce the surrender or transfer of what has been attached. In this way, an unwilling domain name holder can be required to surrender their domain name, for example.
Trademarks and trade names are legally protected. Competitors are not allowed to use them without permission, and that also applies to a domain name. Trademark holders and domain name holders regularly clash over who has more right to a domain name.
Trademark law gives the holder of a trademark an exclusive right to that word. However, this is subject to certain conditions. For example, several companies may hold a trademark right to the same name. For example, there are three companies in the Netherlands that use the word Ajax: the football club, the fire prevention company, and Colgate-Palmolive for a cleaning product. This is possible because the products in question have nothing to do with each other.
Likewise, three companies can use the same trade name, even if they operate in the same industry. The only requirement is that no two companies in the same geographical region use the same trade name.
First come, first served
Domain names are unique. Therefore, only one of the three companies mentioned above can use the domain name ajax.nl. The same holds true for bakkerjansen.nl or any other domain name. The rule is: first come, first served. With ajax.nl, the football club was first, so the other two had to register an alternative name. They may lose customers because of this, but there is nothing they can do about it.
However, they can take action against a domain name if there is a risk of confusion due to the way the domain name is used. If the football club were to sell fire extinguishers on its website, the fire prevention company can take legal action against it. The same applies if the football club were to sell the fire extinguishers in a brick-and-mortar store. In that respect, there is nothing special about domain names. Infringement is infringement, regardless of whether it happens online or offline.
What restrictions apply to registering domain names? When does a domain name infringe a trademark or trade name? You can read all about it in our ‘Hand over that domain name!’ fact sheet.
To the fact sheet
For more information, call +32 (0)2 808 17 41. You can also leave a message using the form; one of our trainers will then contact you.
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