Domaingrabbing - when a domain registration becomes problematic

Domaingrabbing is when someone deliberately registers domains in which others might have a great interest. This practice can be an abuse of rights.

We explain how you can fend off domaingrabbing or defend yourself against the accusation.

Content

1. What are domain & trademark?
2. What is domaingrabbing and what forms does it take?
3. When is a violation of rights due to domaingrabbing?
4. How can you, as the owner of a trademark or name, take action against the domain owner?
5. What procedures exist for domain disputes?
6. Conclusion

1. What are domain & trademark?

If you want to create your own website, you need a domain as an address. Through this you will be found on the Internet. For example, the domain of our website was "kanzlei-bennek.de".

For domains with the country-specific abbreviation ".de", registration with Denic eG is necessary. The domain is then allocated without further examination as to whether third party rights conflict. The first-come, first-served principle applies.

This means that whoever registered the domain first also has the prior right and is authorized to use it.

A trademark, on the other hand, is a much more general identifier. It enables products and services to be associated with a specific company - both online and offline. Under certain circumstances, however, the domain name is protected by trademark law. This is the case if the domain

• has also been registered as a trademark (§ 4 No. 1 MarkenG)
• has not been registered as a trademark, but has achieved a certain level of recognition in the public as an indication of the product (§ 4 No. 2 MarkenG)
• or it is a business designation, i.e. the company is identified by the name itself or it is a work title (§ 5 MarkenG).

2. What is domaingrabbing and what forms does it take?

Domaingrabbing means that someone registers domains on a precautionary basis that could be of interest to third parties. The focus is not on using the domains themselves. Rather, the interest lies in selling the domains at a later date for a profit.

Different forms are to be distinguished here:

• Often generic terms are registered as domains, which have a descriptive character (e.g. erbsen.de).
• In the case of cybersquatting, on the other hand, deliberately protected brands, company trademarks or names are registered as domains. The monopoly right held by the owner of the protected right can then be impaired by the registration (e.g. iphone.de).
• In the case of a typo domain, the domain name contains a well-known trademark that is slightly modified by a misspelling (e.g. wetteronlin.de, bundesliag.de, t-offline.de).
• If you are accused of domaingrabbing, I will defend you against this accusation!

3. When is a violation of rights due to domaingrabbing?

The registration of a domain for subsequent sale purposes does not in principle constitute an abuse of rights. Due to its economic value, trading is just as possible as with goods of any other kind.

For a violation of rights through domaingrabbing, additional circumstances must be present; each case must be considered individually.

The intention must lie in the targeted obstruction of competitors and no interest of the domain holder worthy of protection must be discernible. For this purpose, it must be differentiated which content the domain has and which intention the registrant pursues.

These cases are particularly important:

a) Use of descriptive generic name

In principle, Denic eG does not impose any restrictions on generic terms, i.e. you can register any number of descriptive terms as a domain without hesitation. The person who registers the domain first also gains the sole advantage.

However, this behavior violates the law if visitors to the website associate a certain company or person with the generic term and are thus possibly mistaken about the assignment. This is then referred to as misleading under competition law.

The same applies to the generic term if it simultaneously represents a name. In most cases, however, this will be negated (e.g. sonntag.de as a name).

It is also not permissible if you register a domain in order to specifically intercept potential customers of your competitors by having your domain have a similar spelling and hoping for (typing) errors of the customers (e.g. buecher.de and buecherde.com).

However, this behavior is only unfair in the sense of competition law if the user's decision to buy is influenced.

The domain owner must clearly want to get between potential customers and competitors. Occasionally, this is already evident from the name of the domain (why else would one register "buecherde.de"?). However, there may be opportunities for defense here.

b) Use of names or protected marks

If names or protected trademarks are registered as domains (e.g. iphone.de), this constitutes an infringement of rights if the domain holder is specifically aiming to obstruct or harass competitors.

The domain holder must not have any private interest of his own in the use of the domain. The purpose of the registration must be to offer the domain to the competitor as a commodity and to virtually force him to buy it.

What is reprehensible here is not the registration alone, but precisely the offering for sale. Problems may arise under trademark and competition law. Name rights may also be violated.

The reason for this protection is the danger of confusion by potential customers and damage to reputation. A high level of investment is often behind trademarks or company logos. These investments are intended to pay off exclusively for the owner of the trademarks.

4. How can you, as the owner of a trademark or name, take action against the domain owner?

If your rights are infringed by domaingrabbing, there are various ways in which you can take action against the domain holder:

• If your (company) name was unlawfully registered as a domain, you may be entitled to injunctive relief under Section 12 of the German Civil Code. The use of your name must then cease. Exceptions may arise, for example, if your name is used by a company whose name recognition is outstandingly high. In this case, the court may allow the company to use the name as a domain despite the first-come, first-served principle (e.g. shell.de, krupp.de). The protection of the name then takes a back seat to the protection of the company trademark.
• If the domain holder has unlawfully registered your company logo or trademark as a domain, you can take action against him by means of injunctive relief under §§ 14 (2), 15 (4) MarkenG.
• In addition, a claim under Section 826 of the German Civil Code (BGB) based on intentional immoral damage may also be considered.
• As a competitor, Section 4 No. 4 of the German Unfair Competition Act (UWG) also provides you with protection against obstructive competition, i.e. if domaingrabbing deprives you of the opportunity to develop in the market and offer your services.
• If you have lost profit or suffered other damage as a result of domaingrabbing, you can assert a claim for damages. As part of the calculation, you can, for example, take as a basis a hypothetical license fee that would have been incurred if you had allowed the use of your name or trademark.
• It should be noted that there is no entitlement to transfer of the domain.

5. What procedures exist for domain disputes?

For domain disputes concerning generic top-level domains (e.g. .com, .net), an out-of-court arbitration procedure exists. For the country-specific domain extension ".de", however, this procedure is not relevant. If no out-of-court settlement is possible, you can turn to the courts.

In addition, you should set up a dispute entry with Denic eG, which will then enable you to enforce your rights and at the same time facilitate the transfer of the domain to you as soon as the domain has become free.

Conclusion

Domaingrabbing means the precautionary registration of domains with the intention of selling them later at a profit to the "real" interested party.

Domaingrabbing can be committed, for example, through the use of generic names, typo domains or the identical use of protected names and trademarks.

In principle, domaingrabbing is not an abuse of rights. However, an infringement may exist if the registration serves the sole purpose of hindering and harassing competitors by inviting them to buy.

Such actions may violate provisions of trademark law, competition law and name law. Affected parties are entitled to claims for injunctive relief and/or damages.

Picture credits: © scanrail ​ | PantherMedia