I have a trademark, I want to own all the domains in which it is mentioned
It is not uncommon for a trademark owner to expect that he will be able to take over all domains in all registries after he has registered a trademark in Ukraine. Therefore, the first thing they do is look in WHOIS who is the domain name registrar and write a letter «please give me the domain abc.com urgently as i have the 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 a decision of the arbitration court under 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 about the sale of the domain name that you are interested in. You can contact the domain owner by sending an email to the domain name registrar asking them to forward the email to the domain owner. The most common mistake in letters is that they try to pressure or intimidate the owner with litigation — this is usually guaranteed to result in a refusal.
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 in 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", according to the points above, the less likely it is to win the court.
How to contact the domain owner?
The legislation prohibits publishing information about the domain owner, so the easiest way to contact the registrant is to send a letter to the mailbox of the hosting provider with a request to forward it to the domain owner.