Domain Names

BARDEHLE PAGENBERG advises and supports clients in the field of domain names. This particularly includes supporting clients in developing and maintaining a suitable domain name portfolio, which especially involves taking measures and bringing proceedings, particularly arbitration proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), to prevent illicit domain name registrations, i.e. domain names registered by third parties using protected trademarks as signs.

Domain names are not IP rights in the traditional sense. They are at the interface between (modern) marketing, IT and the protection and enforcement of trademarks and other designations, with aspects of unfair competition also being taken into account. Those considering a new trade name or product brand will always need to check whether a given domain name is still available. We support our clients in this process, particularly where third parties have registered domain names containing protected trademarks and signs contrary to the rights holder’s interests.

The world of domain names has changed significantly in the last few years. Until 2014, there were only about 200 Top Level Domains (i.e. domain name extensions such as .de, .com, .org or .biz) available. Now, ICANN, the Corporation handling and managing domain name extensions, has significantly increased the number of Top Level Domains. In brief, domain names can be registered under more than 2000 Top Level Domains, including geographical indications such as .paris, .bayern or .berlin, as well as brand names like .bmw, .google or .marriott. Generic Top Level Domains, such as .shop, .web or .store, as well as terms for industry sectors like .bank, .fashion, .auto or .shoes will be of particular interest.

The large number of domain name extensions offers brand owners a great opportunity to present their marks on the internet in a new way by securing attractive and suitable domain names. With our experience, we can support you in developing the best strategy. However, we have also seen many third-party registrations under these new Top Level Domains, which are then often used for illicit purposes, for example offering counterfeits of brand products under those domain names.

In most cases, we can prevent this in a quick, efficient and cost-effective manner. ICANN provides various mechanisms to protect rights from illicit third-party domain name registrations. In particular, arbitration proceedings under the UDRP can be initiated with WIPO by requesting the transfer or cancellation of domain names (illicitly) registered by third parties. BARDEHLE PAGENBERG can support and represent you in such proceedings.