A third party registered my domain name under another extension, how should I react?
It is possible to act against a third-party who uses a domain name similar to yours.
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When registering your domain name, you undoubtedly thought long and hard about which extension to use.
For a site intended for a French audience, .fr is obvious. On the other hand, if your audience is international, .com seems more suitable. Finally, If you are a start-up, maybe you dare to use .io ?
Once the choice of your main extension has been made, the question of registering secondary extensions still arises. For a young company, this is a significant cost and it makes sense to make a choice. Indeed, there are a plethora of extensions that are more or less relevant depending on your target and your activity.
By nature, this choice will leave you at the mercy of cybersquatters, especially if your business grows in reputation. They will not hesitate to register an identical or similar domain name under different extensions, hoping to resell them to you. Competitors may also try to get ahead of you on search engines, by means of redirects, in order to capture your customers.
Fortunately, domain name protection has been taken into account in the texts. Indeed, there are tools to combat these unscrupulous third parties.
Unsurprisingly, the first step is to contact the third party who registered the domain name, telling them that your domain name was previously registered under another extension.
However, if you have also registered your domain name as a trademark, procedures such as the Syreli and the UDRP procedure make it possible to obtain the cancellation or to recover the domain name registration.
If this is not effective or if you do not have Registered trademark, it will be necessary to initiate legal proceedings.
A whois search on the domain name in question should allow you to identify this third party. Many services allow you to perform this search (for example whois.net or whois.domaintools, or the AFNIC service for .fr — which must be completed by an identification request, the identity being automatically hidden for the French extension).
Initially, it is useful to attempt a first contact by email followed by a formal notice by registered letter with acknowledgement of receipt (French or international, depending on the person concerned) in case of lack of response. The formal notice is the same as recommended in case of registering a trademark similar to yours in a previous article.
This preliminary phase is useful in order to try to obtain a quick and amicable settlement of the dispute.
AFNIC created the procedure Syreli in order to allow holders of intellectual property rights to obtain the deletion or transmission of a domain name that infringes their previous right.
The article L45-2 of the Postal and Electronic Communications Code provides that:
“the registration or renewal of domain names may be refused or the domain name deleted when the domain name is:
1° Likely to undermine public order or morality or rights guaranteed by the Constitution or by law;
2° Likely to infringe intellectual property rights or personality rights, unless the applicant demonstrates a legitimate interest and acts in good faith;
3° Identical or similar to that of the French Republic, of a territorial authority or of a group of territorial authorities or of a national or local public institution or service, unless the applicant demonstrates a legitimate interest and acts in good faith.”
However, it will first be necessary to prove an interest in acting. Ownership of an earlier trade mark is generally sufficient.
The Syreli procedure is subject to a procedural fee of 250 euros excluding VAT and a delay of two months.
This is a simple procedure but particularly practical for trademark owners who want to avoid cybersquatting.
ICANN has set up the UDRP procedure whose operation and purpose are similar to the Syreli procedure: an earlier trademark is necessary.
This procedure applies to gTLD domain names, such as .com and.net extensions.
Article 4 of the ICANN Guidelines provides that it is possible to bring proceedings against third parties who have registered a domain name that is identical or similar to a trademark to the point of creating confusion, without legitimate rights or interests. The recording must also have been made and used in bad faith.
It will be necessary to prove that the registration has been carried out in order to create confusion with your trademark.
This procedure is quick (around sixty days) and is subject to a fee of 1,500 dollars.
It will allow you to regain ownership of the domain name.
In the absence of trademark registration, it is more complicated to assert precedence over the domain name. Indeed, as it stands, the system was designed for owners of intellectual property rights. The domain name has an intermediate status and does not really fall within this framework.
It is possible to rely on unfair competition, or even parasitism, to obtain the removal of the domain name.
In particular, it will be necessary to highlight the bad faith of the third party who registered the domain name.
If the third party is domiciled outside France, it will also be necessary to have the decision enforced abroad via an enforcement procedure, which has the effect of making the procedure more complex.
As a result, legal proceedings are not recommended for this type of dispute, both because of their complexity, duration, and cost. Rather, it is a disruptive strategy if it is impossible to remedy the situation by other means.
It is therefore useful to complete the domain name registration with a trademark registration (verbal or figurative). The conflict between two domain names can easily be resolved by this intellectual property title.
The domain name, while fundamental for your digital communication, is not enough to protect the term used.
Registering a trademark will offer you more extensive possibilities for defending your domain name. This investment can also limit the risk of confusion with another domain name by visitors to your site.
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