Trademark and service mark owners whose registered trademark is registered as domain name by the third parties, have the right to initiate legal actions against such third parties claiming that their trademark right is infringed.
Application to WIPO Arbitration and Mediation Center
Uniform Domain Name Resolution Policy (‘’UDRP’’) adopted by the Internet Corporation for Assigned Names and Numbers (‘’ICANN’’) in 1999, which is incorporated by reference into registration agreements signed by those who seek to register a domain name, sets forth arbitration as a method of settling any disputes arising from the registration and use of a registered domain name. Currently, six service providers are entitled to conduct the arbitral process in accordance with the UDRP. World Intellectual Property Organization (‘’WIPO’’) is the most commonly preferred service provider.
Registered trademark/service mark owners can request from WIPO Administrative Panel either the disputed domain name be transferred to themselves or be cancelled/changed, provided that the applicant (referred to as ‘’Complainant’’) proves that each of three elements listed below are present.
i. The domain name of the Registrant (as defined under the UDRP), is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Registrant has no rights or legitimate interests in respect of the domain name; and
iii. The Registrant’s domain name has been registered and is being used in bad faith.
While the proof of the first element mentioned above varies from case to case, it is held in numerous WIPO panels that a domain name of the Registrant is identical or confusingly similar for the purposes of the UDRP, when a domain name incorporates a registered trademark of the complainant in full (See: Magnum Piering, Inc v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525), even if the domain name includes suffixes and/or additions such as sounds, syllables or signs.
The second element which must be also sufficiently demonstrated by the Complainant, is relatively hard to prove. Therefore, as per the precedents of WIPO, if the Complainant makes a prima facie showing that the Registrant lacks right or legitimate interest, proof of burden shifts to the Registrant (See: Crotia Airlines d.d.v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). In light of the foregoing, once the Complainant reasonably shows that the Registrant has no right or legitimate interest in the domain name, it will be the Registrant who will have to submit a response proving the opposite.
Finally, the Complainant must prove that the disputed domain name is registered and used in bad faith by the Registrant. For instance, domain name holders trying to sell the registered domain name at exorbitant prices to the trademark owner or its rivals, as frequently encountered in practice, is considered as a sign of bad faith.
Filing a Lawsuit Before The Competent Courts
Another solution for preventing the infringement of a trademark by unfair use of a domain name is to file a lawsuit under Article 7 and Article 9 of the Industrial Property Code No: 6769 (the ‘’IPC’’) and thereby request from the court permanent blocking of access to the relevant website hosted on the disputed domain name.
In such a lawsuit, the plaintiff has the right to request determination of infringement, cessation of existing infringements, and prevention of possible infringements in accordance with Article 149 of the IPC along with pecuniary and non-pecuniary damages, if any. Furthermore, temporary access-blocking to the website might be requested as a provisional injunction before filing a lawsuit or during a pending case. It is worth mentioning that Turkish Higher Court of Appeal considers using a registered trademark in a domain name an infringement under the IPC (See: T.C. Yargıtay 11. Hukuk Dairesi E. 2015/13656 K. 2017/1555 T. 15.3.2017).
We would like to stress that filing an application to WIPO Arbitration and Mediation Center shall not prejudice none of the parties’ right to bring a lawsuit before the competent courts. Indeed, in some of its Administrative Panel Decisions, WIPO addresses the courts to rule the cases where the main issue does not merely involve cybersquatting or other abusive domain name registration, stating that the UDRP is only intended for cases which clearly relates to cybersquatting or other abusive domain name registration. It is also worth noting that even for such cases the authority of the panelists to review is not exclusive (See: Levantur, S.A. v. Media Insight, ).
Having explained that parties’ right to file an application to WIPO Arbitration and Mediation Center is not exclusive, we would like to underline that a lawsuit brought before courts may indeed impact implementation of WIPO’s arbitral awards. If the non-prevailing party brings a lawsuit before the competent court claiming ownership over the disputed domain name and demonstrate this to ICANN by submitting official documentation such as a copy of the complaint or file-stamped by the clerk of the court within the ten business day from ICANN is officially notified by WIPO, implementation of WIPO’s arbitral awards will be delayed. In this case, ICANN shall take no further action until the receipt of evidence satisfactory of a resolution between parties or of the lawsuit has been dismissed or withdrawn, or receipt of a copy of the order from such court dismissing the lawsuit or ordering that the plaintiff does not have the right to continue use the disputed domain name.
Filing a Criminal Complaint
The IPC also includes criminal provisions related to trademark infringements. As set forth under Article 30, a person who produces goods or provides services, sells, offers, imports or exports goods or services, purchases, possesses, transports, stores goods or services for commercial purposes in violation of a trademark right by identical use or use without sufficient distinctive adaptation, shall be sentenced from one year to three years of imprisonment and punished with judicial fine up to twenty thousand days. In accordance with this article, trademark owners may file a criminal complaint against any person who commercially uses a registered mark in a domain name or content of a relevant website since such actions fall under the scope of criminal liability laid down by the law.