A domain name in itself is not a distinctive sign in the same way as a trademark or corporate name. While it is indeed used to identify and distinguish a company from its online competitors, it differs from the trademark since it is not an industrial property title and from the corporate name because it does not necessarily identify the company that is attached to it. However, the content of the root, the term from which it is formed, is likely to be a protected distinctive sign such as a trademark.
If you are the victim of an abusive registration of a domain name, there are certain procedures available to you that, under certain conditions, will enable you to block the disputed domain name or recover your rightful domain name.
Three important procedures
1. The "Alternative Dispute Resolution" arbitration procedure
This has been developed by the Belgian Centre for Arbitration and Mediation (CEPANI) for disputes related to ".be".
This procedure can be used for disputes concerning trademarks and trade names, company names, places names, personal names and the names of geographic entities. It requires three simultaneous conditions to be met:
- the holder's domain name is identical or similar;
- the holder has no legitimate right in relation to the domain name;
- the domain name was registered or used in bad faith.
2. Code of Economic Law (Articles XII.22, XII.23 and XVII.23) on the abusive registration of domain names
These articles make it possible to obtain the termination of a domain name registration and its cancellation or transfer by its holder in certain cases. The action in question applies not only to any ".be" domain name registration but also to any person, domiciled or settled in Belgium who has registered a domain name. This second case relates to extensions other than ".be".
The procedure is treated as a summary actionby the Tribunal of first instance or Tribunal of enterprises. To be successful, it must satisfy three simultaneous conditions:
- the domain name is identical (or is similar enough to cause a risk of confusion) to a trademark, a geographic indication or designation of origin, a business name, an original work, a company or association name, a surname or the name of a geographic entity belonging to someone else;
- the domain name holder does not hold any rights or legitimate interest in relation to the domain name;
- have acted with the intention of harming or taking undue advantage of a third party.
When the domain name includes a third party trademark, legal action can also be brought under trademark law. The holder of the right to the trademark (Benelux or community) can take legal action enabling them to order a third party to cease using their trademark, regardless of whether the third party is acting in bad faith. Yet, the termination of the use of the trademark does not necessarily result in the transfer of the domain name.
3. Alternative dispute resolution
It is also important to mention an alternative dispute resolution applicable to gTLDs (for example, ".com", ".vlaanderen", ".info") and certain ccTLDs (for example, ".nu"): the Uniform Domain Name Dispute Resolution Policy (UDRP).
Finally, and still in relation to trademarks, when ICANN decided to allow new generic extensions ("New gTLD Program"), it set up a protection mechanism (the "Trademark Clearinghouse") enabling the trademark holder to benefit from a priority registration right for a "sunrise" period" and to receive alerts during a "trademark claims period" for any registration attempt for the relevant trademark. See the ICANN website for more information on this subject.