3.17. Copyright infringement

There are often cases when a trademark owner assumes that they can claim all domains in all registries after registering a trademark in Ukraine. Therefore, the first step they take is to check the WHOIS data of the domain registrar and write a letter "urgently transfer the domain abc.com to me, as I own the trademark abc". However, this tactic leads nowhere, as the domain registrar has no authority to make decisions regarding the transfer of a domain name. The basis for the transfer of domain names for the registrar is:

1. The desire of the domain owner.
2. The presence of an arbitration court decision under the UDRP procedure (only for zones that support it). Provided that the domain owner has not begun to contest this decision in a regular court.
3. A court decision that has entered into legal force.

Before filing a lawsuit, we recommend negotiating with the domain owner regarding the sale of the domain name you are interested in. You can contact the domain owner by sending a letter to the domain name registrar with a request to forward the letter to the domain owner. The most common mistake in such letters is attempting to pressure or intimidate the owner with legal proceedings—this usually guarantees a refusal.

Before filing a lawsuit, it is worth paying attention to the following facts, which significantly affect the outcome of the case:

1. Was the trademark registered at the time of domain registration?
2. Has it been recognized by Ukrpatent as generally accepted?
3. Does the domain owner infringe on your copyright by selling (only commercial use constitutes an infringement) products of your manufacture on the site?
4. Does the domain owner sell goods from the same classes in which you registered your trademark?
5. If the domain zone is international, is your trademark protected in the countries (information about the countries covered by the protection is specified in the trademark registration certificate) to which the domain zone pertains?

The more "no" answers to the points listed above, the less likely it is to win the case.

Legislation prohibits the publication of information about the domain owner, so the simplest way to contact the registrant is to send a letter to the hosting provider's mailbox with a request to forward it to the domain owner. For domains registered with us, use the special form.