We warn companies launching new brand names about domain name hijackers who monitor the databases of trademark offices in bad faith. Therefore, the availability of key domain names must be ensured, and their registrations taken care of before filing trademark applications.
“We have come across with a domain squatting case, in which a third party registered a domain name corresponding to a new brand name in bad faith just after filing the European Union trademark (EUTM) application”, describes Jani Kaulo.
This recent case concerned the registration of .com domain name, which is identical to the EU trademark application filed with the European Union Intellectual Property Office (EUIPO).
“Companies launching new brands should be aware of the fact that the filed EUTM application may come publicly visible in the EUIPO’s database on the same day as it was filed. Therefore, companies launching new brands should make sure before filing trademark applications that the key domain names are available and register them in the company's name to avoid problems," advises Jani Kaulo.
A domain name must not be unlawfully based on another's protected trade name or trademark. If a domain name identical to these has been registered in bad faith, i.e. with the intention of profiting or harming, it is possible to apply for the domain name to be transferred to the prior right holder.
"On the other hand, if the owner of the domain name can show an acceptable reason for registering the domain, the owner can prevent the transfer. But further, if the domain holder brings content to the domain address and uses an identical trademark for the same or similar goods and/or services as the prior right holder of the mark, then it is a trademark infringement," explains Jani Kaulo.
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