Domain names: 4 tips from lawyers to avoid and effectively resolve your conflicts

Contrary to popular belief, the domain name must be available to be reserved. In the presence of a conflict, a coexistence agreement can be negotiated, before resorting to arbitration or legal action.

1. Check the availability of your domain name

A domain name is, like a trademark, trade name or company name, a trade term, known as a “distinctive sign”, that allows the public to identify a company. The law lays down rules common to all these distinctive signs. The first rule, which is common sense, is that a company does not have the right to use a distinctive emblem that is already used by another company. Failing this, the company using the first disputed sign may request its transfer to court.

Companies must therefore check the availability of the domain name they wish to use before registering it with a registrar. This search for availability is all the more important as the investments in communication on the domain name will be important.

This availability check is called a “prior art search” in the jargon of intellectual property law firms. This is a check on many official registers because the domain name whose use is planned has not yet been used by another company as, in particular, a domain name, trade name, company name, trademark, indication or appellation of origin. This search also aims to verify that the domain name is not contrary to public order.

2. Conclude a coexistence agreement with owners of similar names

If you wish to use a domain name but it is already being used by another company, you can contact that company to conclude a “coexistence agreement”. This agreement will provide that each company will renounce to take legal action because of the exploitation by the other company of the similar domain name.

This agreement may provide for other amicable arrangements:

• Companies may agree to pay a starting sum or a periodic fee to the company that first operated the domain name;
• Companies may agree that the new entrant performs certain services for the other company;
• Companies will also be able to plan the creation of a web page, on the site of the new arrival referring towards the site of the company having exploited the first the domain name.

3. Obtain the transfer of a domain name by arbitration

Everywhere in the world, when a company buys a domain name, it does so by concluding a reservation contract with a registrar. With very few exceptions, this contract provides that the domain name must not violate the rights of the trademark owner. If the domain name infringes a trademark, its owner can then resort to a special procedure, called “UDRP”. This special procedure, which takes place entirely on the Internet, allows the effective transfer of the domain name to the trademark owner within 2 months. It thus has the advantage of speed, but does not allow the trademark owner to obtain compensation for the damage suffered. To do so, he will have to take legal action before the “normal” courts.

4. Take legal action against protecting your domain name

The domain name is of commercial value to the company. That is why it is protected by commercial law. The owner of a domain name can thus act in unfair competition against a person who subsequently uses a similar distinctive sign, such as a domain name, a trade name, a company name or a trademark. In concrete terms, unfair competition proceedings involve taking legal action before a commercial court. This action is initiated by an act, called a “summons”, which is drafted by a lawyer.