Are you interested in a domain name on the internet that is no longer available?

Have you ever wanted to buy an internet domain name to match your brand, and found out that someone else had already registered it? Or have you even been contacted to sell it?

In this situation, the question is: is there a way to recover that domain name?

The answer, fortunately, is Yes! Although, in practice, few people and professionals know it.

The Pérez Parras Economists & Lawyers Firm in Málaga and Nerja are specialised in New Technologies Law and LegalTech have a solution for this situation.

What is an internet domain name?

The domain name, or internet address, has the generic structure www.nombrededominio.es.

In domain names we speak of a hierarchy of levels, so that “.es” is the first level, and “domainname” is the second level, the domain name being formed, in this example, by “domainname.es ”

Therefore, there cannot be two identical domain names on the Internet. However, we can have two identical domain names of the second level, with different first level endings: for example “perezparras.com” and “perezparras.es“.

Internet Domain Name

Our goal in buying a specific domain name is obviously to identify our company or services on the Internet

The domain I want is already registered. It’s too late!!!

There are different providers of domains on the internet. In general, companies that offer hosting space in the cloud for websites (hosting companies), also offer the purchase of domain names.

If you find out that the domain name that you are interested in is unavailable because someone has already registered it, you can now know who bought it earlier at the following URL:

What are the regulations that govern domain names in Spain?

In Spain, the assignment of domain names is governed by Law 24/2002, of July 11th, on Services of the Information Society and Electronic Commerce, developed by the National Plan of Internet Domain Name, approved by the Order ITC / 1542/2005 of May 19th.

According to that Order, domain names are assigned to individuals or legal entities that have interests or maintain links with Spain. Obtaining the domain is achieved, provided that:

  • They are free (not previously assigned)
  • That they comply with the rules of syntax and other common rules for the assignment of domain names “.es”
  • And that they are not included in the list of terms prohibited by the aforementioned Order

The Order delegates responsibility for the use of a name and domain, and respect for the rights of intellectual and industrial property, to the person or organisation that has purchased and registered it, incorporating Law 34/2002, of July 11th. This is the legal provision that, in case of misuse due to conflict, the assigning authority must proceed to the cancellation of the domain names whose owners infringe the rights.

Internet Domain Name

Internet domains are, in principle, an identification code on the Internet, an electronic address on the computer network

Can I retrieve a domain name that interests me, but that someone has already bought?

As mentioned at the beginning of this post, the answer is YES; as we saw in the previous section, and thanks to the provision made by Spanish regulations.

The Judgment of the Provincial Court of Alicante, of January 17th, 2008, based on art. 11.2 Order ITC / 1542/2005 of May 19, reminds us that prohibited terms are those:

  • that include expressions contrary to the Law, morals or public order
  • whose express wording may violate the right to the name of natural persons or the right of industrial property
  • (this situation that we are describing in this post is the situation that really interests us, and can protect us)
  • That may violate the right to honour, privacy or good name or which could lead to the commission of a crime

Also, the aforementioned precept (article 11.2 Order ITC / 1542/2005 of May 19th) stipulates that the requested domain names, in accordance with the corresponding prior judicial request, are cancelled for committing these prohibitions. They may even form part of a list of prohibited domain names.

That is to say, there is a generic legal provision to generate the judicial cancellation when the trademark conflict is among the rights infringed by use of domain name 

In addition, there is a specific legal provision in art. 34.3.3 of the Trademark Law when there is identity or similarity between signs and products or services; which is also covered under the regime of the Community Trademark Regulation, art. 9.2.b Regulation 207/2009 of February 26th. That implies a particularly prohibited use, or a prohibition by the owner of the trademark being violated.

Hence, because the domains are purchased without a prior examination of compatibility with industrial property rights, this may cause a verification a posteriori of the collision with this right and the cancellation of the assignation and its subsequent prohibition of use as a domain name.

Therefore, from the Pérez Parras Economists & Lawyers Firm in Málaga and Nerja, we can only recommend to all our clients that they register the brand of their business to:

  • protect their own brand, and prevent it to be claimed by a third party
  • protect the domain names associated with their brands,
  • so that they cannot be acquired by others,
  • or so that they can be recovered in case they have been purchased by a third party.

The Pérez Parras Economists & Lawyers Firm in Málaga and Nerja  consists of expert lawyers in trademark registration facilitating the process before the corresponding administrative entity.

Therefore, the previous Judgment of the Provincial Court of Alicante, of January 17th, 2008 shows there is a clear incompatibility

  • between the sign (trademark) registered by a person
  • and the domain name purchased by a different one.

A clear risk of confusion arises in the market when the brand and the domain name:

  • are identical within the framework of a clear similarity of the activities to which both companies are engaged.

In this regard, the conclusions of the AP Madrid Judgment of June 10th, 2011 are particularly relevant:

“We are aware of the conflict that may arise between trademarks and commercial names, and internet domains. It is evident that brands and trade names should not be confused with domain names.

  • Brands, currently one of the main business assets, are signs to distinguish the products and services of a company
  • Trade names, differentiate the activities provided by a certain entrepreneur
  • Internet domains are, in principle, an identification code on the Internet, an electronic address in the computer network

However, it should not be forgotten that the Internet has become one of the main means of displaying business activity and disseminating goods and services, so that conflicts may arise between them, especially if the domain name is used to promote the confusion between goods and services of either entrepreneur. Hence, the owner of the trademark or trade name may demand that its “ius prohibendi” reach its use in telematic networks or as a domain name “(articles 34.3.e and 87.3 LM).

Conclusions

Yes, we can legally defend an internet domain that another person has bought; when it generates confusion with our own brand, products and services. Therefore, again, it is important to register our business brand.

The judgment of the Supreme Court of October 25th, 2012 also clarifies that the internet domain name:

  • not only serves as an indication of an Internet address,
  • but also can fulfil functions of the distinctive signs.

In particular, you can identify the business origin of certain products or services.

Likewise, the Judgment of the Court of Justice of the European Union of July 11th, 2013, states:

  • When a domain name refers to certain products or services, or even to the commercial name of a company:
  • “it constitutes a form of communication that is aimed at potential consumers. It suggests that, with that name, they will find an internet site in relation to such products or services or even with the relevant society. “

In short, a conflict between domain names and brands must be resolved before International Arbitration Organisations or before the Courts.

To confront whoever uses a domain name equal to a trademark or trade name already registered, with priority over time, you may:

  • Go to the Courts of Justice (article 34.3.f of the Trademark Law), and / or
  • Make use of the administrative procedures of verification and cancellation before Red.es; if the domain name applies to the causes foreseen for this purpose.

You may invoke the appropriate laws on unfair competition or existence of bad faith; (see Article 51.1.b of the Trademark Law). However, this type of legal actions is especially complex in order to obtain a favourable result.

The lawyers of Pérez Parras Economists & Lawyers Firm in Málaga and Nerja, are experts in trademark registration, internet domain names, utility model registration, and protection of business data, websites and applications in the Stores.

If you need assistance in New Technologies Law, or you want to reserve your brand, do not hesitate to consult our office of Economists & Lawyers.