Domain Names on the Internet and Conflicts with Trade Marks or Trade Names: What Is Cybersquatting and How to Fight It

On top of good-faith conflicts, there is a clearly abusive phenomenon: cybersquatting – speculative registration of domain names identical or similar to existing trade marks or famous names, with the aim of reselling them at a high price, blocking the trade mark owner or diverting traffic and customers. For these situations, a specific, fast and relatively inexpensive mechanism was created: the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and similar procedures at national or regional level for certain country code top-level domains (ccTLDs).

This article explains, in a neutral tone and in accessible language for business owners and lawyers alike: what a domain name is, how it comes into conflict with trade marks and trade names, what cybersquatting is, how UDRP works, what options exist for .ro and .eu domains, and when and how to go to court.

1. What is a domain name and how does it relate to trade marks and trade names?

1.1. Domain name as a technical and commercial identifier

A domain name is a human-readable address in the Domain Name System (DNS), translating a technical IP address into an easily remembered string (for example, maglas.ro, example.com, company.eu). For Romanian country-code domains .ro, the registry is RoTLD – Romania Top Level Domain. For .eu, the registry is EURid.

Legally, in most jurisdictions (including Romania) a domain name is essentially a contractual right of use: the holder does not become an “owner” in the classical civil law sense but acquires a right to use the name under a registration contract and the rules of the relevant top-level domain (TLD). RoTLD describes .ro as a service for registration and administration of domain names, including access to DNS, rather than a property title.

For .ro domains, the RoTLD Registration Rules apply to all applicants and specify who may register certain second-level domains (for example, .tm.ro is reserved for registered trade marks), with allocation generally based on the “first come, first served” principle, subject to compliance with technical and substantive rules.

1.2. Registered trade mark and trade name

A registered trade mark in Romania is governed by Law no. 84/1998 on trade marks and geographical indications, which gives the owner an exclusive right over the sign for specific goods and services. Under Article 36 of Law 84/1998, the trade mark owner may prohibit the use in trade of any sign identical or similar to the trade mark for identical or similar goods or services where there is a likelihood of confusion, including association.

A trade name / company name is the name under which a company or professional is registered in the commercial register or a professional register. It is protected by civil, commercial and unfair competition law, including Law no. 11/1991 on unfair competition, against parasitic or misleading uses by others in commerce.

1.3. Why do conflicts between domain names and prior rights arise?

Most registries do not carry out a full prior rights clearance when a domain is registered. They generally do not systematically check whether the string is already a registered trade mark, trade name or other protected identifier. This lightweight technical model leads to frequent collisions: domain names identical or similar to existing trade marks, company names or other distinctive signs.

Romanian and international case-law show many disputes where trade mark owners have taken action against domain holders, both in court and through UDRP or ccTLD mechanisms. For .ro, decisions and case-notes can be found in collections such as “.ro domain name case-law” (Legi-Internet), which summarise court decisions and dispute-resolution cases.

2. Types of conflicts between domain names and trade marks or trade names

2.1. Domain identical to someone else’s trade mark

The clearest scenario is when someone registers a domain name identical to an earlier trade mark and uses it for identical or similar goods/services. For example, registering famousbrand.ro or famousbrand.com where “FAMOUSBRAND” is already a national or EU trade mark for the same type of goods.

In such cases, the trade mark owner can rely on the exclusive rights under Law 84/1998 (or the EU Trade Mark Regulation for an EUTM) to prohibit use of the sign as a trade identifier in commerce, including as a domain name. Where the extension supports it (gTLDs like .com, and many ccTLDs), the owner may also bring a UDRP or similar complaint.

2.2. Domain similar to a trade mark (likelihood of confusion, typosquatting)

Conflicts also arise where the domain is not identical but clearly similar to a mark. Typical patterns include:

• adding a generic word: brandshop.com vs brand.com;
• deliberate misspellings or keyboard errors (typosquatting): gooogle.ro vs google.ro, facebok.com etc.;
• prefixes or suffixes suggesting an official link: brand-official.ro, brand-support.com, brand-login.eu.

In these situations, analysis focuses on whether there is a likelihood of confusion or association in the eyes of the average internet user, applying criteria similar to trade mark infringement tests: visual, phonetic and conceptual similarity, distinctiveness, the closeness of goods/services and the way the domain is used.

2.3. Domain in conflict with a trade name or unregistered sign

Sometimes, the domain conflicts not with a registered mark but with a company name or an unregistered sign that has acquired distinctiveness through use (for example, a well-known brand used locally without registration). A competitor may register yourcompanyname.ro to exploit an existing reputation.

In such cases, the holder of the trade name or unregistered sign may rely on:

• protection under unfair competition rules (Law 11/1991) where the domain use constitutes unfair competition (free-riding on reputation, creating confusion, denigration, etc.);
• civil law rules on the right to a name and tort liability under the Civil Code (for example, Articles 1349 and following on liability for unlawful acts).

2.4. Domain used for fraudulent or criminal activities

A particularly severe category is where the domain is used for fraud: phishing, fake banking or e-commerce sites, stealing login data, selling counterfeit goods. Beyond trade mark or trade name infringement, such use may involve criminal offences (computer crime, fraud), so defensive measures include not only UDRP/ADR or civil actions but also complaints to criminal authorities, computer emergency response teams and payment providers.

3. What is cybersquatting and how do you recognise it?

3.1. Definition and context

Cybersquatting is broadly understood as registering domain names identical or confusingly similar to trade marks, trade names or famous personal names without a legitimate interest, in order to resell them, block the rightful owner or divert traffic and customers for profit.

The World Intellectual Property Organization (WIPO) describes cybersquatting as abusive registration and use of domain names and has become the leading global provider of domain name dispute resolution. WIPO emphasises that when your brand is misused online to deceive consumers (“cybersquatting”), you can reclaim the domain name through the UDRP or a ccTLD variant.

3.2. Typical indicators of cybersquatting

UDRP panels and courts have identified recurring indicators suggesting cybersquatting, for example:

• registration of a domain identical or very close to a distinctive or famous mark or name, without any genuine link to the trade mark owner;
• offering the domain explicitly for sale to the trade mark owner (or its competitors) for an amount far exceeding registration costs;
• “parking” the domain on pay-per-click pages displaying ads that exploit confusion with the brand;
• redirecting traffic to competitors’ sites or problematic content to pressure the trade mark owner to purchase the domain;
• a pattern of registering many domains corresponding to different brands, showing the registrant as a serial cybersquatter.

3.3. Trends and statistics

WIPO’s statistics show a steady increase in domain name disputes. WIPO reports that it has administered tens of thousands of UDRP and related cases, covering almost 100,000 domain names, reflecting the growth of domain registrations and the centrality of online presence for brands.

4. Legal framework: UDRP, .RO, .EU and other procedures

4.1. UDRP – Uniform Domain-Name Dispute-Resolution Policy

The UDRP is the policy adopted by ICANN (Internet Corporation for Assigned Names and Numbers) to resolve disputes involving domain names registered in generic top-level domains (gTLDs) such as .com, .net, .org and many others. The official text can be found on ICANN’s website: Uniform Domain-Name Dispute-Resolution Policy.

The UDRP is incorporated into registration agreements between registrants and ICANN-accredited registrars. By registering a domain in a covered TLD, the registrant agrees in advance to submit to UDRP proceedings if a third party brings a complaint. ICANN has also adopted UDRP Rules, updated in 2024 to align with the Registration Data Policy.

Rights holders file UDRP complaints with accredited dispute resolution providers such as the WIPO Arbitration and Mediation Center or other providers (for example, FORUM) to seek transfer or cancellation of domains registered and used in bad faith.

4.2. The three cumulative elements of a successful UDRP complaint

Under Paragraph 4(a) of the UDRP, the complainant (typically a trade mark owner) must prove all three of the following:

1. The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights.
2. The respondent (domain holder) has no rights or legitimate interests in respect of the domain name.
3. The domain name has been registered and is being used in bad faith.

The WIPO Guide to the UDRP explains these elements, summarising panel practice and offering examples of how similarity, legitimate interests and bad faith are assessed.

4.3. Examples of “bad faith” under the UDRP

The UDRP sets out a non-exhaustive list of circumstances that may evidence bad faith registration and use, including:

• circumstances indicating the respondent registered or acquired the domain primarily to sell, rent or otherwise transfer it to the trade mark owner or one of its competitors for valuable consideration in excess of documented registration costs;
• a pattern of registering domains to prevent trade mark owners from reflecting their marks in corresponding domain names;
• registration of the domain primarily to disrupt a competitor’s business;
• using the domain to attract, for commercial gain, internet users to the respondent’s site or other online location by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement.

4.4. UDRP procedure in brief

In simplified terms, a UDRP case follows these steps:

1. The complainant files a complaint with an accredited provider (often WIPO), including evidence of trade mark rights, domain registration data and the respondent’s use.
2. The provider checks formal compliance and notifies the registrar, which locks the domain to prevent transfers during the dispute.
3. The respondent receives the complaint and has usually 20 days to file a response.
4. A panel of one or three independent panellists is appointed to decide the case based on written submissions.
5. The panel issues a reasoned decision, which is published on the provider’s website and sent to ICANN and the registrar.
6. If the complaint is upheld, the panel orders transfer of the domain to the complainant or its cancellation. Monetary damages are not available under UDRP.
7. Either party can still initiate court proceedings; if the respondent files a lawsuit within a specific period, implementation of the decision may be stayed.

4.5. .RO and WIPO services for ccTLDs

Beyond gTLDs, many country code domains (ccTLDs) have adopted UDRP-based or UDRP-inspired policies. WIPO’s ccTLD Domain Name Dispute Resolution Service lists ccTLDs that use WIPO for dispute resolution and summarises the applicable policies.

For .RO, the registry has retained WIPO as a dispute resolution provider. The dedicated page “Domain Name Dispute Resolution Service for .RO” explains that RoTLD has voluntarily adopted WIPO’s policy and rules for certain .ro disputes, in addition to its own terms and conditions.

In practice, this means that for many conflicts involving .ro domains, brand owners can use a WIPO-administered procedure similar to UDRP, adapted to the .RO context, as an alternative to or in parallel with court actions.

4.6. .EU and the ADR procedure (Czech Arbitration Court)

For .eu domains, Regulation (EU) 2019/517 and EURid’s registration policy provide for Alternative Dispute Resolution (ADR) to handle disputes regarding speculative or abusive registrations and other issues. ADR for .eu is administered by the Czech Arbitration Court (CAC), operating the ADR.eu platform in all official EU languages.

EURid’s “Domain name disputes” page explains that ADR allows rights holders to challenge speculative and abusive registrations of .eu domains, with the main remedies being transfer or revocation of the disputed domain. ADR is conducted online and is generally faster and cheaper than court proceedings.

5. Practical strategies for trade mark owners and entrepreneurs

5.1. Prevention: coordinated checks and registrations

The best way to avoid costly disputes is to design your brand strategy proactively:

• before investing in a brand name, check its availability as a domain name (.ro, .com, .eu, etc.) using registry lookups and registrar search tools;
• in parallel, check trade mark availability in official databases: OSIM, EUIPO eSearch, and WIPO Global Brand Database;
• register the core domain names early, at least on key extensions (.ro, .com, .eu), and secure the corresponding trade mark (national or EU) as soon as possible.

A minimal digital/IP strategy for a Romanian business typically includes:

• at least one .ro domain and, depending on target markets, .com and/or .eu domains matching the core brand;
• a national trade mark (OSIM) or EU trade mark (EUIPO) covering the main goods/services;
• periodic monitoring for new domain registrations containing the brand or obvious variants (typosquatting).

5.2. Negotiation and amicable solutions

Not every conflict needs to go straight into UDRP/ADR or court. In many situations an escalated, step-by-step approach works better:

1. Informal contact (email or phone), explaining your prior rights and asking for voluntary transfer, renaming or discontinuation of use.
2. A formal cease and desist letter from a lawyer or IP counsel, with evidence of your rights and references to UDRP/ADR and relevant case-law.
3. Negotiation of compromise where the other party has some arguable legitimate interest (for example, transition period, coexistence with clear limitations, different territory or sector), always considering the risk of future confusion.

However, in clear cybersquatting cases – especially where the registrant demands a high price or uses the domain abusively – amicable approaches should be combined quickly with preparation for UDRP/ADR to minimise damage and avoid delay.

5.3. Choosing the right procedure: UDRP, ADR or court?

When your brand is being abused in a domain, the choice of forum depends mainly on:

• Domain extension: gTLD (.com, .net, .org etc.) → UDRP; .eu → ADR at CAC; .ro → WIPO ccTLD procedure and/or courts; other ccTLDs → their specific policies (often listed on WIPO’s ccTLD page).
• Main goal: if you primarily want the domain transferred or cancelled, UDRP/ADR is usually faster and cheaper; if you also seek monetary compensation, you will need a court action.
• Complexity of the facts: if the dispute involves complex evidence, witnesses, fraud, or delicate questions of national law, courts may be more appropriate than UDRP.

6. Court actions in Romania – when and how?

6.1. Actions based on trade mark infringement

When a domain name is used as a trade identifier in commerce and reproduces or imitates a prior trade mark, the mark owner can bring a trade mark infringement action before Romanian courts under Law 84/1998. Typical claims include:

• injunction to stop using the sign, including as a domain name, and refrain from using confusingly similar signs;
• withdrawal or modification of signage, websites and online content using the sign;
• publication of the judgment;
• damages for material and moral loss, based on evidence (lost sales, harm to reputation, etc.).

Although courts cannot directly “reassign” the domain (because the registry contract is governed by registry rules), in practice a final judgment may be used to convince the registrar or registry to cancel or transfer the domain, in line with their terms and conditions.

6.2. Actions based on unfair competition or tort liability

Beyond trade marks, domain use may be attacked as unfair competition under Law 11/1991 or as a tort under the Civil Code. Examples include:

• using a domain almost identical to the claimant’s trade name to mislead customers and divert business;
• operating a site under a misleading domain to spread false or disparaging information about a competitor;
• creating the false impression that the site is “official” or affiliated, without any relationship to the brand or trade name owner.

The court can order cessation of the unfair practice, removal of its effects (for example, deleting the site or correcting misrepresentations) and payment of damages. In serious cases, competition authorities or regulators may also be involved.

6.3. Relationship between UDRP/ADR and court proceedings

UDRP and .eu/.ro ADR procedures are alternative, administrative mechanisms, not a substitute for courts. Parties remain free to go to court before, during or after a UDRP/ADR case. If the respondent files a lawsuit within a certain period after a UDRP decision ordering transfer, implementation of the decision may be suspended while the court decides.

In practice, however, many cybersquatting disputes are finally resolved at UDRP/ADR level, because these procedures are faster, cheaper and focus specifically on the domain name issue.

7. Typical scenarios and how to handle them

7.1. Someone registered the .com version of your registered mark

You own a registered trade mark “EXAMPLE” in Romania and perhaps as an EU trade mark. You discover that a third party has registered example.com and uses it to sell similar products or to display ads.

Typical steps:

1. Collect evidence: screenshots, WHOIS data (as far as available under privacy rules), web archive captures, any communications.
2. Send a cease and desist letter demanding cessation of use and transfer of the domain, relying on your trade mark rights.
3. If no satisfactory answer, file a UDRP complaint with WIPO or another provider, arguing: (1) identity/similarity; (2) lack of legitimate interests; (3) bad faith registration and use.
4. Evaluate whether court action is needed, especially if you want damages or the respondent’s conduct is part of a broader pattern (counterfeiting, fraud).

7.2. .RO domain registered earlier but later used abusively

Conflicts also arise where a .ro domain was registered years before a company was formed or before a mark was registered. Later, the mark becomes well-known and the domain holder starts using the domain in a way that obviously takes advantage of that fame.

Solutions depend on the facts: whether the registrant knew of the mark and changed the use of the site in bad faith, whether the site is confusing or fraudulent, whether there is a pattern of abusive registrations. Depending on the case, a WIPO .RO ccTLD proceeding may be combined with a Romanian court action based on trade mark infringement and unfair competition.

7.3. Domain almost identical to your trade name, but you have no registered mark

If you do not yet have a registered trade mark but you have built a strong reputation under a particular company name, and a third party registers a similar domain to impersonate you or mislead customers, possible tools include:

• evidence of the notoriety of your trade name (history, invoices, advertising, media, web traffic);
• unfair competition claims (deliberate confusion, free-riding, denigration);
• UDRP or ADR complaints in those systems that recognise unregistered rights in certain circumstances, depending on the policy of the relevant TLD or ccTLD.

8. FAQ – Frequently Asked Questions

9. Useful resources

• RoTLD – Registration Rules for .ro domains
• ICI / RoTLD – About .ro domain registration
• WIPO – Domain Name Dispute Resolution (cybersquatting and UDRP)
• WIPO Guide to the UDRP
• WIPO – ccTLD Domain Name Dispute Resolution Service
• WIPO – Domain Name Dispute Resolution Service for .RO
• ICANN – UDRP Text
• ICANN – UDRP Rules (updated 2024)
• .EU ADR Platform – Czech Arbitration Court
• EURid – .EU domain name disputes
• Romania – Law no. 84/1998 on trade marks and geographical indications
• Romania – Law no. 11/1991 on unfair competition
• “.ro” domain name case-law (Legi-Internet)