How to prove your domain's unregistered trademark

Started by Novel Web Solution, Aug 17, 2022, 10:41 AM

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Novel Web SolutionTopic starter

Your domain name has been stolen, as you discovered either through your email or by seeing someone else's ad on your website. Upon checking the admin panel, you realized that the DNS had been changed to another server.

This causes you to feel furious, scared, and bewildered as to how this happened. You contact technical support but are given an unhelpful response, causing you to demand to speak with management. Eventually, you receive a message that the domain name is blocked and must go to the police about the issue. After months of investigation, a decision is made not to initiate a criminal case. The scammers then demand a large sum of money for the return of the domain.

To get the domain back, you can file a claim with the arbitration of the World Intellectual Property Organization (WIPO). WIPO can provide assistance in the conflict between trademark and domain name owners. If you have a registered trademark, you only need to submit it to the arbitrators and justify the defendant's lack of a legitimate interest in using the domain.

WIPO also applies the concept of an unregistered trademark if needed. To prove ownership, you need to provide screenshots from analytics systems and show high attendance through Google Analytics or other services. If you can prove the existence of an unregistered mark, you may be able to get your domain back. However, "descriptive" signs are only considered trademarks if they have acquired "distinctiveness."

The owner of a domain with the word "vilka" in its name must prove that it has the right to an unregistered trademark. This can be done by showing that the word has become associated with their products and is no longer just a product name. Those using a trademark for commercial activities must prove they have made a profit or attempted to make one.

To file a claim with WIPO, a $1,500 fee must be paid if you want a single arbitrator to hear the case. The application should specify that the claimant has the right to an unregistered trademark, that the defendant has no rights or legitimate interests in the domain name, and that they registered it with an unfair purpose. Documents and screenshots must be attached to the application.

Additional documents should be avoided unless they are necessary. WIPO will decide whether to accept the application within five days, and upon submission of the application, the domain is blocked. If there are flaws in the application, another five days will be given for corrections.


There are several uses for a domain name, including corporate or personal mail, or not using it at all. In these cases, there will be no history or visitor activity.

In a specific case, the author's domain was taken away through fraudulent means. Registering or having an unregistered trademark does not address this illegal transfer.

When it comes to criminal actions, there should be a more straightforward solution.


The ICANN website lists 5 currently operating organizations for domain disputes, but none of them are WIPO.

It's important to note that not every dispute falls under the UDRP and WIPO. A list of domains by country covered by the UDRP can be found on the WIPO website. It's also worth noting that UDRP doesn't apply to certain domain names in Armenia (.am).


WIPO arbitration allows you to retrieve a domain if there is a registered trademark or if the site has been visited. Domains that are unused or unvisited will remain with the thief.

While a simpler solution would be ideal, unfortunately, there isn't one.

As for using whois history services to assist, there are some free services available that show the history of NS servers. There is also a paid service that claims to show the history of domain owners. It's up to the individual to decide whether paying for this service makes sense.


I'm still feeling furious, scared, and bewildered about how this could have happened in the first place. It's disheartening to receive unhelpful responses from technical support and to be told that a criminal case cannot be initiated. The scammers demanding a large sum of money for the return of the domain only adds insult to injury.

However, I will gather all the necessary evidence, such as screenshots from analytics systems and proof of high attendance, to prove my ownership and establish the existence of an unregistered trademark if needed. I will also make sure to justify the lack of a legitimate interest on the part of the defendant in using the domain. It's reassuring to know that WIPO can assist in resolving conflicts between trademark and domain name owners.

I understand that there is a fee of $1,500 to file a claim with WIPO, which covers the cost of a single arbitrator hearing the case. I will make sure to include all the required information and attach the relevant documents and screenshots to the application. I'll be mindful of avoiding unnecessary additional documents unless they are necessary for the case.

To prove your domain's unregistered trademark, you will need to gather evidence that demonstrates the association of your domain name with your products or services and establish its distinctiveness. Here are some steps you can take to help provide such evidence:

1. Document Branding Efforts: Collect any marketing materials, advertisements, or promotional content that display your domain name in connection with your products or services. This could include screenshots of your website, social media pages, brochures, or any other relevant materials.

2. Show Evidence of Usage: Provide evidence that you actively use the domain name as a trademark. This can be done by showcasing how your domain name is prominently displayed on packaging, labels, or in any communication related to your goods or services. For example, include photographs or screenshots of product packaging displaying the domain name prominently.

3. Prove Consumer Recognition: Gather evidence that consumers associate your domain name with your products or services. This can be achieved by submitting customer testimonials, reviews, or feedback that specifically mention your domain name in connection with your offerings. Additionally, if there are any industry awards, accolades, or media coverage that reference your domain name, include those as well.

4. Website Traffic and Analytics: Provide data that illustrates the level of traffic and engagement your website receives. Screenshots from analytics systems like Google Analytics or other website traffic monitoring tools can demonstrate the popularity and visibility of your domain name. Highlight any significant increases in traffic or any positive trends over time.

5. Sales and Financial Records: If applicable, provide sales records, invoices, or financial statements that show revenue generated from products or services associated with your domain name. This can help demonstrate the commercial nature of your usage and the profits made or attempted to make.

Remember, to successfully establish an unregistered trademark, it is important to demonstrate that your domain name has acquired distinctiveness and is associated with your products or services beyond just being a descriptive term.

Consulting with a legal professional who specializes in intellectual property law can provide further guidance specific to your situation and jurisdiction.