3.17. Copyright infringement
I have a trademark, I want to myself all the domains in which it is mentioned
There are often cases when a trademark owner expects that he can take all domains in all registries for himself after he has registered a trade mark in Ukraine. Therefore, the first thing they do is look in the WHOIS who is the domain name registrar and write a letter «urgently transfer me the domain abc.com as I have a trademark abc»... But this tactic does not lead to anything, since the domain name registrar does not have any rights to make decisions regarding the transfer of the domain name. The basis for the transfer of domain names to the registrar is:
- Domain name owner's wish.
- Availability of an arbitral tribunal's decision on the UDRP procedure1). Provided that the domain owner did not begin to challenge this decision in a regular court.
- The final judgment.
Before filing a lawsuit, we recommend that you negotiate with the domain owner to sell the domain name that 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 letters is that they try to pressure or intimidate the owner with legal proceedings — this usually leads to a guaranteed rejection.
Before filing a lawsuit, you should pay attention to the following facts, which greatly affect the outcome of the case:
- Was the trademark registered at the time of domain registration?
- Is it generally recognized by Ukrpatent?
- Is the domain name owner violating your copyright? selling2) Are the products of your production on the site?
- Does the domain name owner sell products from the same classes in which you registered the trademark?
- If the domain zone is international, is your trademark protected in the countries3)to which the domain zone belongs?
The more answers "no", for the points above, the less likely you are to win the trial.
How do I contact the owner of a domain name?
Legislation prohibits publishing information about the domain name owner, so the easiest way to contact a registrant is by sending a letter to the hosting provider's mailbox with a request to forward it to the domain owner.