Someone has registered a domain with your trademark? We advise what to do

When a domain threatens your brand. Imagine discovering that someone else is running a domain identical to your company or product name - your trademark. Shock and concern are in order. Such a situation can mean losing clients, damaging your reputation and weakening your market position. Customers may be confused because instead of going to your official site, they may mistakenly head to a competitor's or speculator's site. Your brand (trademark), in which you have invested time and resources, is suddenly at risk and your rights may be infringed. What now?

Don't panic. Such domain disputes are quite common in today's digital age and there are effective steps you can take to defend yourself. In this article, we'll give you clear advice on what to do if someone is misusing your trademark in a domain name. The goal is to protect your brand, minimize the risks and direct you to professional legal help if necessary.

Author of the article: ARROWS (Mgr. Jan Medek, office@arws.cz, +420 245 007 740)

Verify that there is indeed trademark infringement

The first step is to find out as much information as possible about the disputed domain name and assess whether and how it infringes your rights:

• Check the domain registration: use the WHOIS tool (e.g. on the CZ.NIC website) to find out who holds the domain name and when the domain was registered. Date matching is key: if the domain was registered after you started using the brand or after you registered your trademark, it is likely that someone has acted in bad faith and is trying to parasite on your brand. Conversely, if the domain existed long before you acquired the trademark, enforcement will be more difficult - the domain owner may have acted in good faith.

• Check the content of the site: Visit the domain in question. Is a competitor or speculator using your logo, name or other brand feature? Does it offer similar products or services, or even collect data from your customers? If there is content on the site that could confuse customers or damage your reputation, this is an unauthorised use of your trademark and possibly unfair competition. Even a blank page with your trademark in the address can be a problem - blocking you from using the domain and potentially waiting to be bought out.

• Document the situation: take screenshots of the site, save the date of discovery and any communications. This evidence will come in handy if you need to take more drastic action (lawyer, court, etc.).

• Check your legal status: make sure your trademark is properly registered (with the Industrial Property Office - IPO). If you do not have a registered trademark, you can still defend yourself (e.g. by using unfair competition rights), but your position is weaker. Registering a trademark gives you the exclusive right to use the sign for certain fields and greatly strengthens your defence in a domain dispute.

Try to resolve the dispute amicably

Before embarking on legal battles, try the amicable route first. Often, a domain name dispute can be resolved by agreement, especially if the other party has not acted outright with the intent to harm:

• Contact the domain holder: Find a contact (WHOIS database, information on the web, or through the domain registrar) and address them politely and factually. Describe the situation - that you own a trademark identical to the domain name - and explain why the conflict bothers you (possibility of confusion, damage to reputation, infringement). Sometimes the other party doesn't even realize the seriousness of the problem.

• Offer a reasonable solution: This could be, for example, buying the domain for reasonable compensation. If the domain holder has not acted in bad faith and has perhaps used the domain for his own purposes, a fair offer can lead to a quick agreement. However, beware of exorbitant financial demands - some so-called cybersquatters (domain speculators) try to sell domains to trademarks for high sums. Paying extortionists is generally not recommended as it encourages unfair practices.

• Point out the potential legal penalty: Even when trying to conciliate, you can politely but firmly mention that unauthorized use of a trademark is illegal. You can suggest that if no agreement is reached, you will be forced to defend your rights through legal means. Sometimes this information will already make the other party cooperate, because litigation or arbitration also means costs and uncertainty for them.

• Written agreement: If you find common ground (e.g. the domain will be transferred to you for a fee of X crowns, or the other party will stop using it), have everything confirmed in writing. It is ideal to write a short agreement about the transfer of the domain or the cessation of its use, so that both parties are sure. A lawyer can help you with such an agreement.

When and how to involve a lawyer

If an amicable solution fails or the situation requires professional intervention from the outset, it's time to contact a lawyer - ideally a specialist in trademark and IT law. An experienced attorney can help you protect your domain rights effectively and with peace of mind:

• Don't wait too long: The sooner you get a lawyer involved, the better. You can already consult with the domain holder on the procedure at the first contact. A legal consultation will confirm whether you are in a strong position and what the real chances of success are. This will avoid missteps that could weaken your position (e.g. an inappropriately worded email could be used against you later).

• Pre-action challenge: A lawyer can prepare a formal demand to stop the infringement (called a pre-suit demand or cease and desist letter). Such a demand, sent on law firm letterhead, is often very persuasive - the other side will see that you are serious and that you are prepared to defend your rights in court. In many cases, the delivery of a legal letter already leads to a quick settlement or a cessation of the offending conduct.

• Strategy and evidence: the lawyer will advise you on the optimal strategy - whether a trial, arbitration or other procedure is preferable. He or she will also help you gather evidence of infringement (trademark registration, website screenshots, evidence of your use of the mark, any losses). An experienced attorney anticipates the other side's arguments and prepares you for them.

• Litigation representation: when it comes to domain name litigation or arbitration, legal counsel is practically a must. He or she will defend your interests in court or before an arbitrator, formally file the lawsuit or petition to initiate litigation, and take care of all legalities and deadlines. That way, you can focus on your business while the expert leads the legal battle.

By engaging a lawyer, you also show that you are actively defending yourself. The opposing party may then find it easier to conclude that they are losing and prefer to settle amicably - even at the last minute before the verdict.

Legal defence options under Czech law

When an agreement is not possible, legal action is the next step. In the Czech legal environment, there are several ways to defend yourself if someone infringes your trademark through a domain name:

• Court proceedings (trademark infringement action). You can file a lawsuit in the competent court (typically a regional court, commercial department) for trademark infringement and possibly unfair competition. In the action, you can ask the court to prohibit the defendant from using the disputed sign (domain name), order him to transfer the domain name to you or cancel its registration, and pay damages or unjust enrichment if you have suffered financial loss. The court route provides an authoritative decision but can take a long time. In urgent cases, you can also apply for an interim measure to quickly prohibit the use of the domain before the final verdict (e.g. if a website on the domain immediately damages your reputation).

• Alternative Dispute Resolution at CZ.NIC (arbitration): for .cz domains there is a special out-of-court procedure known as ADR (Alternative Dispute Resolution), which is provided by the Arbitration Court at the Czech Chamber of Commerce and the Czech Chamber of Commerce in cooperation with CZ.NIC (the .cz domain administrator). This arbitration process takes place online and is usually faster than court. The arbitrators will assess your claim based on the ADR rules: you must prove that the domain name is identical or confusingly similar to your trademark, that the domain holder has no rights or legitimate interest in the name, and that he registered or is using the domain in bad faith (e.g. to prevent you from using it or to extort money). If you are successful, the arbitration award may order the domain to be cancelled or transferred to you. The advantage is speed (on the order of months) and lower costs compared to court; the decision is binding and upon its submission CZ.NIC will amend the domain registration.

• Industrial Property Office (IPO): although the IPO does not directly decide on domain disputes, it plays a role in the registration and protection of trademarks. If you have not yet registered your brand as a trademark, do so promptly - registering with the OHIM will give you a formal right to the name and a right of priority (from the date of filing). This means that anyone registering a domain name after that date without your permission is at a distinct disadvantage. Should the holder of the disputed domain file an application for an identical trademark at the same time, you can file an opposition with the OHIM and prevent the registration of their mark on the grounds of your prior rights. The OHIM thus serves as a precaution - secure your mark early to make it easier to defend yourself. (By the way, the European Union also offers the possibility of protecting your mark as an EU trademark if you operate outside the Czech Republic.)

• Unfair competition claim: If your mark is not registered, you can rely on the general provisions on unfair competition under the Civil Code. Parasitizing the reputation of an established brand and causing confusion are among the prohibited unfair competition practices. In practice, such a dispute would also be settled in court, but the argumentation would revolve around your company's reputation and its use in the course of trade instead of the infringement of the registered trademark. However, this route is more difficult to prove - you must show that your brand was well-known in the market and that the domain holder's actions are objectively capable of harming you.

Each of these routes has its pros and cons. The ideal strategy often combines multiple steps - e.g., a preliminary injunction for quick action, followed by arbitration in ADR to obtain the domain name, and possibly court proceedings for damages. The key is to choose the course of action that best protects your particular interests - a legal professional can help you with this.

Protect your brand - and don't hesitate to seek legal help

Don't let your domain name and brand be taken away. If you find yourself in a situation where someone is misusing your trademark in your domain name, act quickly and thoughtfully. Your brand is one of your business's most valuable assets - it deserves effective protection. Ignoring the problem can lead to long-term losses in profits and reputation.

If you're in doubt about which way forward, don't hesitate to seek professional legal advice. A brief consultation with a lawyer can save you a lot of worry and money by pointing you in the right direction. An experienced attorney can assess your situation, suggest an optimal solution and, if necessary, take the negotiation or dispute into his or her own hands. After 15 years of practice, we know that early legal intervention often makes the difference between winning a dispute easily or dragging it out.

So consider a consultation - for example with our law firm, which specialises in domain name and trademark disputes. We offer a free initial assessment, during which we will discuss your options and suggest a course of action. This will give you the confidence that you are doing everything possible to protect your brand.

Protect what you've built. Don't wait for domain problems to damage your business - contact us today for a no-obligation consultation. Together, we'll make sure your trademark and domain name are safe and your competitors or speculators don't have a chance to infringe on your rights. Your business deserves the best protection - and we're ready to give it to you.