Domain law - 7 tips from the lawyer
An Internet presence has become indispensable for companies. Among other things, the choice of a suitable domain has a significant influence on success.
In this context, domain law must also be taken into account. We provide an introduction to this here.
- What is a domain and how can I register it?
- How can I protect my domain?
- When should I register a domain?
- Can I request the transfer of a domain?
- What should be considered when buying a domain?
- What are the limits when choosing a domain?
- What role do warnings play in domain law?
1. What is a domain and how can I register it?
A domain is an address under which you can be found on the Internet (example: www.google.de). It should be as concise as possible and close to the name of your company.
Once you have decided on a domain, your provider usually registers it with the German Network Information Center (DENIC). This administers all ".de domains.” Legally, a registration contract is concluded between you and the registry, granting you the right to use the domain.
However, you cannot acquire ownership of a domain.
2. How can I protect my domain?
You already benefit from minimum protection through the technical peculiarities of domain law. The double assignment of the same domain is technically not possible. You are, therefore, permanently protected from 1:1 copies.
The further scope of protection depends mainly on the specific domain. Of particular interest is the protection provided by the Trademark Act. If your part corresponds to a protected trademark, you can also use it against imitators who use confusingly similar domains.
In addition, you will avoid someone else registering your domain as a trademark and prohibiting you from using it.
To obtain trademark protection, you should register the name of your domain as a trademark. Particularly well-known trademarks or domain names are also protected without registration. However, it is difficult to say precisely when this is the case.
Therefore, registration is a much safer option.
However, not every domain name can be registered as a trademark. Among other things, these aspects are decisive:
- The trademark is not yet protected elsewhere in your region and/or industry.
- The wording has a distinctive character (not given, for example, in the case of purely descriptive terms such as "autos.de").
- You are using the domain for commercial purposes.
ou decide how far the protection of your trademark should extend. You can limit protection to Germany, including all EU countries, and consider other countries. In addition, trademark protection only applies to your industry.
Protection is initially granted for ten years and can subsequently be extended for the same period. Only the individual components of the domain are eligible for protection, i.e., not ".de" and "https" and the like.
If the website is actively used and commercially operated by you, this may acquire a so-called company trademark on the domain name.
Also, in this case, you enjoy absolute protection by the trademark law. No application or registration is necessary for this.
However, it is safer to register it as a trademark.
In addition, your domain name can also be protected via the right to a name according to §12 BGB. An application or registration is also not required here. Here, too, the protection is weaker than for a trademark.
3. When should I register a domain?
The rule is the earlier, the better. Even if you have not yet decided on a company name, it is worth registering your shortlist early.
Once your company is in the public eye, there is a risk that a third party will register a domain under that name. This "domain grabbing" is a common phenomenon.
Users occupy as many domains as possible to demand "ransoms" from interested parties.
Taking action against this often legally abusive behavior can take time and money. Therefore, you should prevent this problem by acting quickly.
4. Can I request the transfer of a domain?
If your desired domain is already taken, the question is: how to get access to it?
As a rule, however, you are not entitled to a transfer claim. At best, you can try to get the previous user to transfer the domain by negotiation.
Your best argument: Depending on the protection of the domain name, you claim that the previous owner no longer uses the domain. The registration is then almost worthless for him.
You have such a right to injunctive relief (or even a right to cancellation) in particular if you have had the domain name protected as a trademark. In addition, your domain name may be saved as a company trademark.
This requires, among other things, that you actively use the domain for commercial purposes. In this case, you can also oblige the previous owner to cease and desist.
Problems arise, however, if the previous owner can also invoke property rights. He often uses the domain as a company trademark, for example.
In this case, it does not always help that you have registered the domain name as a trademark in the meantime. The decisive factor is who first obtained protection under trademark law.
5. What to consider when buying a domain?
If you conclude a domain purchase contract, the registration contract between the previous user and the registry is taken over. The agreement of the registry is generally required for the transfer of the contract.
As a rule, however, this is already granted in the General Terms and Conditions (GTC).
Before concluding a contract, you should reassure yourself that a registration contract exists between your contractual partner and the awarding body.
In the case of a "de-domain,” this can be checked utilizing the "Whois database”. All domain holders are entered. However, even this is not always correct.
If your contractual partner has previously sold to a third party without informing the awarding authority, this will be at your expense. These legal uncertainties should therefore be taken into account in a takeover agreement.
You are welcome to consult us on the drafting of the contract.
In addition, you are dependent on the cooperation of the contractual partner. He must instruct his provider to transfer the domain to your provider technically. This obligation should also be taken into account in a transfer agreement.
In addition, it is worth checking the domain name for conflicts with registered trademarks and company logos. This requires extensive research.
6. What are the limits to be considered when choosing a domain?
There are legal limits to your choice of a suitable domain. Of course, this also applies to your competitors and "domain-hunters.” Among other things, the following must be observed:
a) Misleading domains (§5 UWG)
For example, the use of generic terms is problematic. If you choose a very available domain name, this can be understood as a so-called "unique selling proposition.”
This can give customers the impression that your website is the only offering in this industry.
Example: The domain "Mitwohnzentrale.de" suggests that the website presents the only or largest association of Mitwohnzentralen. The BGH considered this to be misleading. However, this can generally be avoided by clearly stating that you are not claiming a unique position on your home page.
b) Pawning domains
If your company and your domain are very well known, third parties occasionally try to intercept Internet visitors from you.
For this purpose, similar-sounding domains are registered, which often differ from your environment by only a few letters ("typo domains"). Such an approach may violate the law of fair dealing.
Therefore, it is recommended to keep on the lookout for such typo domains. If you find such a domain, it is worth discussing the further procedure with a lawyer.
7. What role do warnings play in domain law?
If you want to defend yourself against possible infringements of your domain, a warning letter is usually the first remedy. In this case, the infringer is typically requested to submit a cease-and-desist declaration with a penalty clause.
A warning letter should be well-founded and based on an infringement of rights.
The following acts of infringement may be considered:
- Violation of the right to a name (§12 BGB)
- Breach of trademark law (MarkenG)
- Special features of competition law/unfair competition law
You can force the infringer's hand by issuing a warning. The infringer must respond to your notification. Otherwise, you can take further legal steps, such as an injunction.
How to proceed here depends mainly on the type of violation and the behavior of the person concerned. We are by your side to advise you on this.
You can protect your domain from imitators and the like by registering the name as a trademark. Other protection options can be considered, but they are less reliable.
If your domain name is protected as a trademark (or company logo), you can, in many cases, demand that others do not use an identical or similar domain.
Above all, a domain must be measured against competition law. Misleading statements are therefore inadmissible.
You can defend yourself against infringements of your rights with a warning notice. For this purpose, the infringer is usually requested to submit a cease-and-desist declaration with a penalty clause.
Do you want to register a domain and need assistance?Make an appointment now!
Image source: Jireh Gibson - Pixabay