Claims for infringement of domains can be asserted in court without further ado. Nonetheless, it regularly is more difficult to effectively enforce the claims against the registration and/ or use of the domain. This is because the proprietors of infringing and/or abusive domains often (actually or seemingly) reside in states where the enforcement of rights and/or the enforcement of a judgment of a German court is not possible at all or only under unreasonable circumstances. Therefore, asserting claims before German courts often amounts to nothing.
Remedies can therefore be provided by out-of-court dispute settlement mechanisms:
According to the allocation terms set up by the organization ICANN for numerous domains, especially for the most widespread top-level domain .com, but also for all “NewgTLDs” (but certainly not for .de domains), alternative dispute resolution proceedings can be invoked against infringing domains and domains that were applied for and used in bad faith. The proceedings have the intention to cancel or transfer the domain and they are based on the regulations of the Uniform Domain Name Dispute Resolution Policy (UDRP) as arbitration rules.
According to the UDRP, the cancellation or transfer of a domain can be requested if (i) the domain is identical with an older sign of the appellant or if there is a likelihood of confusion, (ii) the proprietor of the domain does not have an own right or legitimate interest in the domain and (iii) the domain was registered in bad faith and is still used in bad faith today. The constellations mentioned above (item 5) are regularly accompanied by bad faith.
The UDRP provides for rather simple and cost-efficient proceedings with electronic communication only, short periods for filing and no oral hearing. Thus, proceedings can often be closed after 6 to 8 weeks. Moreover, the most convincing advantage is the possibility of the direct and simple enforcement of the arbitration award (when the proprietor of the domain does not initiate regular court proceedings within 10 working days after the decision has been served). The decision of the arbitration court is not only binding for the proprietor of the domain but also for the registrar. As a consequence, the registrar managing the domain is under the obligation to implement the decision, i.e. to immediately carry out the cancellation of the domain in dispute or to transfer it to the appellant. Failure to do so may result in a complaint against the registrar filed with ICANN. The proprietor of the domain does not have to be involved anymore. Therefore, it is ultimately not obstructive if the proprietor of the domain is factually not within reach.
ICAN created a second out-of-court-procedure for settling a dispute concerning the new top-level domains (newgTLD, see above item 3), namely the Uniform Rapid Suspension System (URS), which is applicable for these domains in addition to the UDRP (and to the court proceedings, of course). The aim is to provide proceedings that are faster, lower priced and more effective for enforcing rights in obvious cases of bad faith. A complaint according to URS is intended to suspend the domain, i.e. the domain proprietor cannot fill the domain with content anymore so that it becomes useless. However, this suspension is temporary. Thus, anyone who is interested in using the domain in dispute should initiate a transfer in the course of UDRP proceedings.
c. Dispute entry for .de domains
A special feature of the .de domain names is the so-called dispute entry that is supposed to facilitate the enforcement of possible rights against the proprietor of an infringing domain and/or a domain that was registered in bad faith.
Such a dispute entry can be requested with the registry for .de domains (DENIC). It has two effects: (i) the proprietor of the domain is prevented from transferring the domain to a third party (it only is possible to transfer it to the holder of the dispute entry) and (ii) in the event of cancellation or release by the proprietor, the domain automatically goes to the holder of the dispute entry. For this reason, the transfer can already be achieved with the help of the dispute entry by asserting a claim for cancellation, although according to German law as described above, in case of a trademark infringement or anti-competitive violation regularly no transfer can be required but at best a cancellation of the domain. This especially refers to cases in which the domain is cancelled due to formal errors (e.g. wrong data of the proprietor).
It is advisable to initiate the dispute entry as soon as knowledge of an infringing domain is obtained; in any case before contacting the proprietor of the domain. Otherwise, there would be a risk that the proprietor of the domain transfers the domain to a third party, e.g. after receiving a warning letter, which would make legal proceedings considerably more difficult.