Have you ever thought that a domain name could infringe on your intellectual property rights, just like a logo or trade name can? Imagine investing time and resources to build a recognizable brand, only to discover that someone has registered a domain name that includes your brand. For example, your trademark “Green Zebra®” could be copied by a third party through the greenzebra.ro domain, misleading customers and damaging your reputation.
Fortunately, there are mechanisms by which trademark owners can take action against this type of infringement. In this article, we explore how domain names are managed globally by ICANN, how trademark and domain disputes can be resolved, and what options you have both internationally and in Romania. We also address how domain holder information is accessed today through RDAP, and why this is important in protecting intellectual property rights.
What is ICANN?
The Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit organization that coordinates the Domain Name System (DNS) globally. In short, ICANN makes sure that when you type a domain name into your browser, you end up on the right website. The organization maintains the security, stability, and interoperability of the Internet’s unique identifiers — such as domain names and IP addresses.
ICANN has a global reach, but it does not act alone. It delegates regional responsibilities to five Regional Internet Registries (RIRs), such as RIPE NCC in Europe or ARIN in North America. These regional organizations manage the allocation of IP addresses and network resources within those regions, under the coordination of ICANN. In other words, ICANN is the central authority in the management of domains, but it divides responsibilities to specialized structures.
What happens when a domain infringes a trademark?
Disputes between trademarks and domain names are not uncommon. Think about an area like nike-sneakers.com. Even if it’s not identical to nike.com, it uses the brand name in a way that can mislead consumers, often in bad faith. To manage these situations, ICANN has developed a special policy: the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
The UDRP provides a legal framework for resolving disputes when a domain name is identical or similar to a registered trademark. Important to note: ICANN does not prosecute these cases directly. Instead, it authorises independent dispute resolution bodies. The most well-known and trusted provider is the World Intellectual Property Organization (WIPO).
Role of WIPO
WIPO administers the Arbitration and Mediation Center — a neutral platform that handles domain name disputes under the UDRP. When a trademark owner files a complaint, WIPO appoints an independent panel of legal experts to review the case, evaluate the evidence and issue a decision. If the decision is in favor of the plaintiff, the domain can be transferred or canceled. The entire process takes place online, without the need for a classic court procedure.
A famous example is Microsoft’s case against domain micros0ft.com (with the number zero instead of the letter “o”), intentionally created to deceive users. WIPO ruled in favor of Microsoft and ordered the transfer of the domain.
Dispute resolution regarding “.ro” domains
For domains with the .ro extension, the administration is carried out by RoTLD. If a person believes that a .ro domain name infringes their rights, they have two main avenues of action: the alternative dispute resolution (ADR) procedure or legal action.
The ADR mechanism allows disputes to be resolved without resorting to a classic judicial procedure. This option is available if the complainant has a prior right to the name – such as a registered trademark, geographical indication or other protected right – and can demonstrate that the domain has been registered and/or used in bad faith, for speculative or abusive purposes.
The RoTLD does not rule directly on the merits of the dispute, but works with specialized bodies, such as the WIPO Arbitration and Mediation Center or the National Dispute Resolution Forum (ADR Forum), which analyzes the complaint based on the applicable rules.
In the event of a decision in favor of the plaintiff, RoTLD implements the decision — which may involve transferring or canceling the disputed domain name. This mechanism offers an efficient solution for Romanian trademark owners, avoiding the costs and duration of a court case.
How to find out who owns a domain: From WHOIS to RDAP
In the past, information about domain owners was available through the WHOIS database, which publicly displayed contact details. With the entry into force of the GDPR regulation and other data protection laws, WHOIS was gradually replaced by RDAP (Registration Data Access Protocol).
RDAP provides a more secure and privacy-compliant way to access domain information. Among its advantages:
- Structured and secure access to domain data;
- The possibility to provide differentiated access to data, depending on the identity of the applicant (e.g. authorities, IP lawyers).
In parallel, ICANN has also launched the Registration Data Request Service (RDRS), which allows parties with a legitimate interest (including trademark owners) to request access to registration data that is not public. Thus, even in a context with strict privacy rules, the protection of intellectual property remains possible.
Conclusion
ICANN, WIPO and RoTLD provide a clear and effective framework for resolving disputes between trademarks and domains, without going directly to court. At the same time, RDAP and RDRS allow these rights to be applied in a way that complies with modern data protection requirements.
If you suspect that a domain is infringing on your trademark, you have clear avenues of action — the TAS Agency can guide you every step of the way. You can find us at the e-mail address: office@tasregistration.com or by phone +40745160163.
