Drugi jezik na kojem je dostupan ovaj članak: Bosnian
By: Lazar Bošković, Creative Director, AgitPROP
You guessed it, this text is a reaction to the blunder of a big global brand, whose national internet domain in Serbia – which they forgot for who knows what reason – was overtaken recently by someone who then redirected the domain to the site of their main competitor. And no, this is not something that is happening only in the Balkans, but also around the world.
For legally uninformed readers, allow us to immediately clarify that the trademark and the internet domain name are not the same thing, although they may sound similar or exactly the same. Because brands (or more precisely trademarks) are registered in the proceedings before the national body for the protection of intellectual property, while internet domains are registered with accredited domain registers. These two processes are in no way automatically linked, and the owner of the brand has to secure on their own the proper domain that goes with it.
OK, we’ve answered the question of the subtitle, there’s no need for you to read the rest of the text. Just go straight ahead to the register of trademarks or register of domains and take care of it! Alas, we know what happened to you – someone had already registered the internet domain that reads exactly as it would best fit with your brand … Fortunately, all is not lost yet.
First you must know that the registration of an internet domain works on the principle “he who is earlier in time is stronger in law”, or as people like to say “first come – first serve”. But, in the terms of domain registration, it is clearly stated that the registrant (domain name user) declares that, to the best of their knowledge and their honest belief, the registration of the requested domain name does not infringe someone else’s intellectual property rights or any other subjective rights. They also state that they are not registering the domain contrary to the principle of good faith, honesty and good business practices, and that they will not knowingly use this domain in violation of the above stated principles. However, there are both companies and individuals who register cheap domain names that sound like the names of someone else’s companies or brands, to resell them later at a premium.
And how can you still reclaim the desired internet identity? It depends on whether the one who had registered your desired domain name did it for good or malicious intent. In short: do they have any meaningful right to such a domain name, or did they do it to gain unfair advantage. Legal definition and procedures are, of course, much more complex, which means that if you think that someone has violated intellectual property rights, or any other subjective right that belongs to you, by registering some internet domain names, you have the right to start proceedings before a court or a local arbitration commission, if the national internet domains are in question.
As a plaintiff, in order to eventually win such a dispute, it must be proven that the following conditions have been collectively met: that the domain name is identical or confusingly similar to your trademark, that the defendant registrant has no rights or legitimate interest in using the disputed domain name and that the defendant registrant used the domain name contrary to the principles of good faith, honesty and good business practices. The latter means that they had registered the domain name for the purpose of selling it or leasing it to the plaintiff or the plaintiff’s competition, at a disproportionately higher price than the price of domain registration, in order to prevent the plaintiff from using it as a domain name for their trademark, or to harm the business of a competitor, or that they used the domain name that is identical or substantially similar to the trademark of the plaintiff, with intent to make profit by misleading and attracting visitors to their own site.
All the above-described conditions and procedures are based on the example of the Serbian National Internet Domain Registry, but very similar or identical arbitration proceedings for domain disputes are in place around the world. The costs of the arbitration procedure cost 1,500 euros and up, depending on the number of domain names, the length of procedure and all the necessary actions during the proceedings. But whom can you blame if you haven’t cashed out a few dozen euros to timely register the desired domain name…