Your brand is now someone else's domain: how to recover it

The case, in five lines

What is brought

An out of court claim to recover the domain name before the registry for that extension, or a trade mark infringement action under article 41 of the Trade Mark Act relying on article 34.3.f), which reaches use of the sign as a domain name.

Before which court

The registry for the extension decides the out of court route: Red.es for domains under .es and the ICANN uniform policy for generic extensions. The court route falls to the Commercial Section of the Tribunal de Instancia (the first-instance court).

Deadline

The out of court route is not subject to a prescription period, although delay weakens your position. The civil trade mark actions prescribe, under article 45, after five years from when they could have been brought, and damages reach only the five years preceding the claim.

Who can bring it

The owner of the registered mark, under article 40. Article 34.7 extends the protection of that provision to an unregistered mark that is well known in Spain within the meaning of article 6 bis of the Paris Convention, except for the reputation case in subparagraph c).

Financial risk

The out of court route requires paying its fee and ends, at most, with a transfer: there are no damages and no costs order. The court route has both, in either direction, and the defendant may demand proof of use of your mark and counterclaim against it.

Article 34 reaches domain names, but subject to a condition

The Trade Mark Act expressly contemplates this dispute. Article 34.3.f) allows the sign to be prohibited in telematic communication networks and as a domain name, and subparagraph d) of that same paragraph reaches its use as a trade name or company name. On paper, your registered mark gives you a direct tool against whoever has turned your name into someone else's internet address.

The condition lies in the opening of paragraph 3: that conduct may be prohibited only where the conditions set out in paragraph 2 are met, and that paragraph requires the third party to use the sign in the course of trade and in relation to goods or services. That is where many cases become complicated, because a merely parked domain, with no content and no offering, does not always fit that requirement.

The analysis therefore starts by looking at what that domain does, not merely at who holds it. A shop selling identical goods fits without argument into subparagraph a) of paragraph 2. A redirection to a competitor, a page loaded with paid advertising links, or business email operating under that domain are also economic activity. A sleeping, silent domain, by contrast, pushes you towards the out of court route.

The out of court route does not judge use, it judges abusive registration

The domain recovery system is not governed by the Trade Mark Act, but by the policy applicable to each extension: the National Plan for domain names under Spain's country code, issued under the sixth additional provision of Law 34/2002, for .es domains, and ICANN's uniform dispute resolution policy for .com and the other generic extensions.

In both systems the complainant argues, in essence, the same thing: that the domain name is identical or confusingly similar to a sign in which it holds rights, that whoever registered it has no rights or legitimate interests in that name, and that the registration or the use is speculative or abusive. Whether there is use in the course of trade is not debated, which is why it works against the parked domain the trade mark route struggles to reach.

What you obtain is also different. The out of court decision ends with transfer of the domain to you or with its cancellation, and it arrives in weeks, not years. What it does not give is money: there is no compensation for the time your customers landed on another site, and no costs order. Choosing the route is above all deciding whether what you need is the domain or whether you also want to be made whole.

If your mark has a reputation, the ground widens

Article 34.2 offers three situations and they do not all demand the same. Subparagraph a) covers an identical sign for identical goods, and subparagraph b) an identical or similar sign for identical or similar goods where there is a likelihood of confusion, including a likelihood of association. Both compare markets, and so they fail where the domain holder is engaged in something unrelated to your business.

Subparagraph c) breaks that limitation where your mark has a reputation in Spain: the sign may then be prohibited regardless of whether the goods or services are similar, provided that the use, made without due cause, takes unfair advantage of the distinctive character or repute of the mark, or is detrimental to either.

And there is a situation that rescues those who never registered anything. Article 34.7 declares the provisions of the article applicable to an unregistered mark that is well known in Spain within the meaning of article 6 bis of the Paris Convention, with the sole exception of subparagraph c) of paragraph 2. A commercially known name, though unregistered, is not defenceless against whoever has turned it into their own domain.

The court route brings cessation, damages and something more

Article 40 recognises the mark owner's right to bring before the courts the civil or criminal actions available against those harming its right, and article 41.1 details the civil ones: cessation of the acts infringing the right, compensation for the damage suffered, and the adoption of the measures needed to prevent the infringement continuing, plus publication of the judgment at the condemned party's cost.

Paragraph 3 of that same article is particularly useful here: cessation and the measures to prevent the infringement continuing may also be sought, where appropriate, against intermediaries whose services a third party uses to infringe, even if their own acts do not themselves constitute an infringement, subject to Law 34/2002 and provided the measures are objective, proportionate and non discriminatory.

The clock is set by article 45. The civil actions arising from infringement prescribe after five years counted from the day they could have been brought, and damages may be claimed only for acts carried out during the five years preceding the date the action is brought. For a domain that has been running for eight years, that second limit decides how much can be claimed.

The case is decided by evidence of purpose, and it disappears within hours

In both the out of court and the court route, what tips the outcome is what the domain was doing before you complained. That is why the first move is never to write to the holder: it is to record with a certain date the content of the page, the active redirections, the advertising links, the registration and renewal data and any offer to sell directed at you or at third parties.

As soon as the first email arrives, the page is emptied, the redirection vanishes and the sale notice is withdrawn. An experienced holder knows that a clean domain is far harder to recover, and also knows that its silence forces you into litigation. Documenting before talking is not distrust, it is the only thing that preserves the case exactly as it stood on the day you found it.

The other front is your own right. Article 41.2 lets the defendant require you to establish genuine use of your mark during the five years preceding the action where the registration is already five years old, and opens the door to a counterclaim seeking its nullity or revocation. Before reclaiming a domain, therefore, we check that the mark supporting it is alive and defensible.

How we run the case, step by step

1. 1

   Photographing the domain before making any move

   We capture with a certain date the site's content, the redirections, the advertising links, the public registration and renewal data and the page's history, along with any email service or shop operating under that name.

2. 2

   Reviewing your own right before invoking it

   We check the state of your mark, its classes, its renewals and the evidence of its genuine use, or whether to rely instead on the protection of the unregistered well known mark under article 34.7.

3. 3

   Choosing the route by extension and objective

   We choose between the out of court complaint, which transfers the domain within weeks but pays nothing, and the trade mark action, which allows cessation and damages but requires use of the sign in trade and exposes your mark to a counterclaim.

4. 4

   Filing the complaint or the claim

   We formalise the complaint before the registry for that extension with the evidence already frozen, or file the trade mark infringement claim with the actions of article 41 and the interim measures that halt the domain's activity.

5. 5

   Executing the transfer and closing the flank

   Once the decision is obtained, the transfer is executed and the position secured: obvious variants of the name, equivalent extensions and control of the expiry dates, so the episode is not repeated by another registrant.

The law that applies

• Art. 34 Ley 17/2001 de Marcas. Defines the owner's exclusive right and what it may prohibit a third party from doing in the course of trade: an identical sign for identical goods, an identical or similar sign with a likelihood of confusion or association, and, where the mark has a reputation in Spain, the sign even for dissimilar goods where unfair advantage is taken without due cause or its distinctive character or repute is harmed. Among the prohibited conduct it expressly lists using the sign in telematic communication networks and as a domain name, and as a company name. It extends its protection to unregistered well known marks. BOE-A-2001-23093
• Art. 40 Ley 17/2001 de Marcas. Recognises the registered mark owner's power to bring before the courts the civil or criminal actions available against those harming its right, and to require the measures needed to safeguard it, without prejudice to arbitration where possible. It is the provision that opens the court route against whoever has registered your mark as a domain name and exploits it. BOE-A-2001-23093
• Art. 41 Ley 17/2001 de Marcas. Lists the civil actions of an owner whose mark is harmed: cessation of the infringing acts, damages, measures to prevent the infringement continuing, destruction or transfer of the unlawfully marked goods, award in ownership of what was seized, and publication of the judgment at the condemned party's cost. It conditions the prohibition on the right not being revocable for non use and lets the defendant demand proof of use over the preceding five years. Its paragraph 3 allows cessation and the measures to be directed at intermediaries. BOE-A-2001-23093
• Art. 45 Ley 17/2001 de Marcas. Provides that the civil actions arising from trade mark infringement prescribe after five years counted from the day they could have been brought, and that damages may be claimed only in relation to infringing acts carried out during the five years preceding the date the action is brought. Against a domain that has been in a third party's hands for years, it is the second limit that fixes how much of that period enters the money claim. BOE-A-2001-23093
• Art. 727 Ley de Enjuiciamiento Civil. Lists the specific interim measures that may be granted, among them a court order to cease an activity provisionally or refrain temporarily from certain conduct, the intervention and deposit of income obtained through an activity deemed unlawful whose cessation is sought in the claim, preventive attachment, and any other measure considered necessary to secure the effectiveness of the judicial relief that a favourable judgment might grant. BOE-A-2000-323

Each article checked against the consolidated text published in the BOE (the Spanish official gazette).

Frequently asked questions