In this post we will show the different ways to follow, with the aim to know how to recover a domain name
What is a web domain
How to recover a domain name is the question we should ask ourselves when faced with any problem that may arise in situations in which a third party, in good or bad faith, is preventing us from using it.
A web domain name is a unique address to access a website. It is composed of the name of the website and the top-level domain (or TLD).
The computers that make up the Internet are located from one another by a series of numbers (known as an “IP address”), which is specific to each device.
However, humans find it difficult to remember long series of numbers, so DNS replaces the use of numbers with letters, linking a particular series of letters to a particular series of numbers.
An example of this is the Coca Cola company. Its IP address is 18.104.22.168 to 22.214.171.124. What people will enter to access the web page will not be a numerical sequence, but www.cocacola.es, for example.
The web domain name system or DNS is that designed to make the Internet accessible to users, and they are classified into three distinct levels of hierarchy:
- Generic Top-Level Domains (gTLD, generic Top-Level Domain).
- Geographic Top-Level Domains (ccTLD, country code Top-Level Domain).
- Third Level Domains.
Before choosing a web domain name, you should check that the name you wish to choose does not already have an owner.
For this purpose, ICANN (Internet Corporation for Assigned Names and Numbers) offers a tool that will allow you to find out if there is an owner of the name you wish to choose, with the “ICANN LOOKUP” program: https://lookup.icann.org/en/lookup.
ICANN (Internet Corporation for Assigned Names and Numbers)
ICANN is a system for monitoring the complex interconnected network of unique identifiers, which facilitates communication on the Internet between different computers.
If a situation where a person has registered a domain name in a generic top-level domain (gTLD) under contract with ICANN, arises, and it is believed that it may be infringing on their trademark, a Uniform Domain Name Dispute Resolution Policy (UDRP) procedure may be filed against the registrant.
The administrative dispute resolution procedure to be used by ICANN will be based on the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN itself in October 2009.
Among many other functions, ICANN provides a channel for complaints about domain names being used by an unauthorized third party, domain name renewals or suspensions, transfer of a domain name to a different registrar and/or registrant, etc.
Red.es is a Public Business Entity, attached to the Ministry of Economic Affairs and Digital Transformation, through the Secretary of State for Digitalization and Artificial Intelligence.
To apply for a web domain registration under the “.es” code, corresponding to the country of Spain, you will go to ESNIC, the competent authority accredited by ICANN, for the management of the registration of “.es” domains.
To do so, you must access the form where you will enter the necessary data for registration.
If the domains “.es”, “.com”, “nom.es” and “org.es” have been requested, they will be assigned automatically after payment has been made.
However, if “gob.es” and “edu.es” domains are requested, prior verifications will be required, with an average assignment time of 24 hours.
Spanish Patent and Trademark Office (SPTO) about how to recover a domain name
The registration of domain names is governed by its own national and international legislation, and is not within the competence of the SPTO.
It is very common for a conflict to arise between domain names and trademarks.
These conflicts must be settled before International Arbitration Organizations or before the Courts.
Pronouncement of the SPTO on the registration of domain names
The SPTO points out that whoever has his domain name correctly registered, may go to the Courts of Justice against whoever registers that same name as:
- trade name
- company name
All this with reference to the legislation on unfair competition, existence of bad faith or other reasons that support their right.
The Provincial Court of Barcelona states that domain names fulfill the same function as trademarks.
However, despite appearing to be similar distinctive elements, each of them has a different legal nature, which leads to continuous conflicts between them.
In the registration of domain names, the “First to file” principle applies, which means that the first one to apply for registration will be granted the registration, whether or not he is the legitimate owner of the trademark concerned.
This practice is currently known as “cybersquatting”, which consists of registering a domain name in bad faith, for one of the following purposes:
- To sell the acquired domain to the trademark holder, for a price higher than the costs of the domain registration.
- To try to prevent the legitimate owner of the trademark from using it for a specific domain name.
- Obstructing the commercial activity of the trademark holder.
- Divert users to the website developed under the specific domain name, thus generating a risk of confusion with the trademark registered by its owner.
The Trademark Law has determined the prohibition to register a domain name exactly the same or very similar to a previously registered trademark, when there is a risk of confusion.
The Unfair Competition Law has also pronounced on this, since the above conducts are typical of acts of misleading, exploitation of the reputation of others and bad faith.
Law of Unfair Competition (LSD)
The use of a domain name identical to a trademark can seriously damage the holder of the trademark, since it will generate great confusion among consumers and users.
The Unfair Competition Law provides us with sufficient tools for the filing of lawsuits, with guarantees, before the unfair action of the holder of a domain name in conflict.
Below we list some actions that the Unfair Competition Law allows us to take, when registering domain names over which the holder has rights or interests:
We must know that unfair act is any behavior that is contrary to the requirements of good faith.
In order to know if an action is unfair we must make an assessment of the conducts whose addressees are consumers.
For example, to know what an average consumer is, we will not even take into account the consumer who spends half an hour in the supermarket reading the label of a product.
Nor will we take into account the consumer who picks up the product without reading the label. The consumer who reads the label at a quick glance will be taken into account.
Acts of confusion
An act of confusion is any behavior that entails a difficulty for the identification or differentiation of the entrepreneur, its products or services, or its commercial establishment, by creating the risk that the consumer or user associates them with the activity, services or establishment of another entrepreneur.
An example of this is the use of another’s distinctive signs.
If the same or almost identical distinctive sign is used as that of a company that has already registered it previously, a risk of confusion will be generated for the average consumer, who may confuse the two companies by using an almost identical or the same distinctive sign.
Acts of denigration
These are those in which inaccurate, false or impertinent information is offered, which may harm the reputation of the affected party.
For example, a company publicly criticizes the commercial activity of a competitor, providing false information or statements without evidence.
In this American advertisement for the soft drink brand Pepsi, a little girl is seen in a bar with her grandfather. She asks the bartender for a Pepsi and the bartender, unseen by the girl, refills the glass with Cocacola.
When the girl takes a sip of the soft drink, she orders the waiter to serve her a Pepsi, denigrating the Cocacola brand by uttering derogatory phrases about it, such as stating that being served a Cocacola is an insult to her and her family.
In Spain, in accordance with article 9 of the Unfair Competition Law on acts of denigration, this advertising practice would not be lawful, as one company would be attacking the good name of the other, disparaging it and making the consumer see that its product is better than that of the competition.
Another example is this Macdonald’s commercial:
In the video you can see a boy who takes, for several days, his food from Macdonald’s to eat in the park, but every day some kids come and steal his fries, his hamburger… leaving him with nothing.
However, one day he decides to take a bag from Burger King, the competition, and put the Macdonald’s food inside. You can see that on that day no child comes to take the food from him, since it is from Burger King, they are not interested.
This German advertising spot would not be allowed in Spain for two reasons.
Firstly, because it makes an obvious disregard of the competing company Burger King, by implying to the public that this brand is not as good as Macdonald’s.
On the other hand, it is promoting child bullying, where it is normalized that some children take food from another child and the solution is to change the product to “a better one”, instead of eradicating such behavior of children.
Exploitation of the reputation of others
The improper exploitation of the advantages of an industrial, commercial or professional reputation that has been acquired by another person in the market.
For example, a jewelry store that begins to market earrings and bracelets in the shape of a bear, will take advantage of the reputation of the original jewelry store that distributes jewelry in the shape of this animal, profiting unduly from it. Therefore, we are dealing with the copying of an industrial design, through the exploitation of another’s reputation.
Once the factual situations that imply unfair competition have been defined, we will be able to use such conceptualization in our judicial or extrajudicial actions, so that unfair competition becomes the perfect companion to the infringement of trademark rights.
In its article 32, the Unfair Competition Law includes the actions that must be carried out to combat acts of unfair competition, and they are the following:
- The declaratory action of unfairness, i.e., the Judge is requested to declare a given act as unfair, for being contrary to good faith.
- The action for the cessation of the unfair conduct or prohibition of its future repetition. For example, a company that is distributing products copied from another company. In this case, it will be requested to cease the creation and commercialization of such products. In the case of a well-founded suspicion that such creation and commercialization will occur, a prohibition may be established, in order to avoid such a situation in the future.
- The action of removal of the effects produced by the unfair conduct. This is to request the elimination of the negative effects produced by the act of unfair competition and the return to the previous order existing in the market.
- The action for rectification of misleading, incorrect or false information.
- The action for compensation for damages caused by the unfair conduct, if there has been fraud or fault on the part of the agent.
- The action for unjust enrichment, which will only proceed when the unfair conduct harms a legal position protected by a right of exclusivity or another of analogous economic content.
World Intellectual Property Organization (WIPO) on how to recover a domain name
WIPO provides a mechanism for resolving domain name disputes without recourse to the courts.
In 1999 ICANN adopted a domain name dispute resolution policy:
Uniform Domain Name Dispute Resolution Policy (also referred to as UDRP).
Supplemental Rules of the World Intellectual Property Organization concerning the Uniform Domain Name Dispute Resolution Policy.
Initiation of the proceeding
The process starts with the filing of a complaint with WIPO and is decided by the panel of experts taking into account the facts and legal grounds set forth in the written submissions of the parties.
This procedure is much faster, as WIPO is obliged to decide within approximately 45 days.
Depending on the decision adopted by the panel of experts, ICANN will order either the transfer of the domain name in favor of the complainant or the cancellation of the domain name.
The nature of this procedure is not arbitral but administrative, so that even if the parties resort to this procedure, it is possible that the parties may resort to the courts to resolve the conflict.
Uniform Domain Name Dispute Resolution Policy (UDRP)
The purpose of this policy is to resolve trademark-based domain name disputes through settlement, court action, or arbitration.
It must be done before a registrar cancels, suspends or transfers a domain name.
Abusive domain name registrations
Disputes over abusive domain name registrations (cybersquatting, among others) may be handled through expedited administrative proceedings initiated by the holder of the trademark rights.
This will be through the filing of a complaint with a dispute resolution service provider.
If you apply to register a domain name or apply to maintain or renew a domain name registration, you represent and warrant that the statements you made about the Registration Agreement are complete and accurate;
You also represent that, to the best of your knowledge, the domain name registration will not infringe or violate the rights of any third party;
You further represent that you will not register the domain name for any unlawful purpose.
Lastly, you represent and warrant that you will not willfully use the domain name in a manner that violates any applicable laws or regulations.
Therefore, it is your responsibility to determine if the registration of your domain name infringes or violates the rights of a third party.
Regarding the appeal of the policy, the owner of a registered trademark shall:
- File a complaint with a court of appropriate jurisdiction against the domain name holder.
- In the event of an abusive registration, a complaint must be filed with an approved dispute resolution service provider.
Specifically, Article 4.a of the UDRP mentions the practices that a domain name squatter must engage in in order for the complaint to proceed:
- The existence of a trademark and the identity or similarity of the trademark with the domain name.
- The absence of rights or legitimate interests of the domain name registrant.
- Bad faith in the registration and use of the domain name by the registrant.
Article 4.b UDRP refers to the evidence of registration and the concept of bad will.
Answer to the complaint
On the other hand, if you have to respond to a complaint and demonstrate your rights and legitimate interests on the domain name, you should refer to paragraph c) of the same article.
An example of this is to have used the domain name in good faith.
Before being notified of the dispute, or to demonstrate the use of the domain name in good will, without intent to mislead consumers in a misleading manner.
In addition, it is important to know that the complainant must select a provider from those selected by ICANN to transmit the complaint.
After that, the Rules of Procedure rule on the initiation and conduct of the procedure.
It will also rule on the appointment of the panel of experts that will hear and resolve the dispute.
In case of joinder of disputes between Complainant and Respondent, joinder of disputes may be requested to the same Administrative Panel.
Involvement of the registrant in the proceedings
It should be added that the registrant does not and will not participate in the administration or conduct of any proceeding before an administrative panel. Nor will the registrant have any liability as a result of any decision rendered by an administrative panel.
For its part, ICANN has appointed WIPO as a dispute resolution service provider to channel the proceedings between the parties.
Legal remedies available to the complainant in the panel proceeding
The following may be demanded:
- The cancellation of the domain name owned by the respondent.
- The assignment to the complainant of the registration of a domain name that the respondent owns.
Notice and Publishing
The provider shall notify the registrant of any decision taken by an administrative panel in respect of a domain name that has been registered.
Finally, with respect to assignments during the dispute, there are two cases:
- Transfer of domain name to a new registrant:
- Change of registrars.
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