Domain name is similar to TM. Is it worth it to fight?

Started by Zora2012, Jul 11, 2022, 03:10 AM

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Zora2012Topic starter

I own a domain called ferari.cctld. Recently, I received a letter informing me about their intellectual property rights.
The interesting part is that the TM Ferrai is not registered in the ccTLD in which the domain is registered, and I have only had 5 visitors in a month of parking. I am unsure if this is a scam, but I am hesitant to rent out the domain as there seems to be interest in it.


It's difficult to determine without knowledge of the country's laws, but defending your domain in a lawsuit may be challenging. However, the UDRP procedure is available in this area, so trademark owners can file a complaint, but it's possible to protect the domain rights.

Though the domain doesn't infringe any laws, using it for parking may indicate unethical registration practices, and precedents in similar cases should be examined. Nevertheless, fighting for the domain is advisable since there's nothing to lose in this situation.


Prior to the company's lawsuit over the domain name's similarity to another trademark, it's possible to protect it. To safeguard the domain name from third-party infringement and ensure its security, there are certain steps that can be taken.

One way to protect the domain is to register it as a trademark, which guarantees 100% protection against any attempts to take it away. If a company registers the domain first as a trademark, they won't have to worry about anyone else registering a similar trademark and claiming infringement of exclusive rights. In such a case, the company can legally prohibit third-party use of the domain and similar designations, destroy counterfeit products, and demand compensation for the illegal use of the trademark.

Take, for example, the scenario where a company is caught illegally marking goods with someone else's trademark, leading to the copyright holder receiving $100K in compensation. The amount of compensation was calculated by doubling the value of the goods on which the trademark was illegally placed.

Simply registering a trademark isn't enough to protect the domain name. It must also be used in tandem with the trademark, such as placing the trademark and site address on merchandise, labels, signage, advertising materials on different media platforms, on TV or the internet, as well as on documentation related to goods or services and on the website. Otherwise, someone who wants to register the same trademark could quickly terminate the legal protection.