Registered Trademark vs. Domain Name in Romania

The evolution of the digital environment has led to a redefinition of the legal instruments for protecting commercial identity. In a context where economic activity has expanded extensively into the virtual sphere, trademarks and domain names have become two essential elements for the individualization of participants in electronic commerce.

1. Introductory Considerations
Although originating from distinct legal spheres—the former belonging to industrial property law, and the latter to the technical domain of electronic communications—both serve a common function: the identification of the source of a product, service, or entity in the economic environment.

This convergence of functions has generated numerous legal conflicts between registered trademark holders and domain name owners, raising complex questions concerning the priority of rights, bad faith in registration, and applicable legal protection measures.

2. Legal Regime of the Registered Trademark

2.1. Definition and Legal Functions
According to Article 2(1) of Law no. 84/1998 on Trademarks and Geographical Indications, a trademark is defined as “any sign capable of being represented graphically, capable of distinguishing the goods or services of one undertaking from those of other undertakings.” Accordingly, the trademark performs a distinctive function, which constitutes the legal essence of its protection.

Doctrine and the case law of the Court of Justice of the European Union (CJEU) have identified three primary functions of a trademark:

• Function of origin – allows identification of the commercial source of products.
• Function of quality and guarantee – assures the consumer that products originate from a consistent source in terms of quality standards.
• Advertising function – a trademark may serve as a commercial communication instrument.

Thus, a trademark is not merely a distinctive sign but a complex commercial asset with inherent economic value and a legally protected component.

2.2. Acquisition and Scope of Trademark Rights
Exclusive rights in a trademark are acquired through registration. In Romania, registration is effected with the State Office for Inventions and Trademarks (OSIM), and at the European Union level, with the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EU) 2017/1001 on the European Union Trademark.

Through the registration certificate, the holder acquires an industrial property right enforceable erga omnes for a term of ten years, renewable indefinitely.

This right is exclusive and grants the holder the power to prohibit third parties from unauthorized use of an identical or similar sign for identical or similar goods or services, where there is a likelihood of confusion among the public (Article 36 of Law no. 84/1998).

2.3. Use of Trademarks in the Digital Environment
CJEU case law has extended the applicability of trademark rights to the online environment, particularly in Internet advertising and domain name usage.

In Case C-236/08 – Google France and Google Inc., the Court held that the use of a trademark as a keyword in online advertising systems may constitute “use in the course of trade” if it affects the functions of the mark.

Accordingly, the use of a trademark within a domain name constitutes a form of commercial use and may fall under the protection conferred by trademark law to the extent that it causes confusion, exploits the reputation of the mark, or undermines its distinctiveness.

3. Domain Names – Legal Nature and Assignment Regime

3.1. Technical Concept and Legal Dimension
A domain name is a unique alphanumeric address that identifies a resource on the global Internet, replacing numerical IP addresses. Beyond its technical function, a domain performs an economic and identificatory function, becoming the digital equivalent of a trade name.

Through continuous use, a domain name acquires a de facto distinctive function akin to that of a trademark, explaining the numerous legal conflicts between these two types of signs.

3.2. Legal Regime of .ro Domains and the “First Come, First Served” Principle
In Romania, the administration of national .ro domains is conducted by ROTLD (Romanian Top-Level Domain Registry), operated by the National Institute for Research and Development in Informatics (ICI Bucharest).

The domain assignment procedure is purely administrative: the applicant submits a request, pays the applicable fee, and obtains the right of use over the domain. Allocation is based on the “first come, first served” principle, without prior verification of whether the requested name infringes third-party rights (trademarks, trade names, copyrights, etc.).

Thus, rights over a domain name are contractual in nature, derived from the relationship between the registrar and the registrant, and do not constitute an industrial property right. The holder acquires no exclusive ownership title but only a right of use, which is subject to suspension or transfer.

3.3. Lack of Autonomous Legal Protection and Interdependence with Other Rights
Domain name rights are not codified by any law but are regulated through technical and contractual norms. Nevertheless, to the extent that a domain name acquires distinct commercial value, it may be indirectly protected via trademark law, unfair competition law (Law no. 11/1991), or civil law.

Consequently, when a domain name reproduces a registered trademark, a legal conflict may arise between the exclusive rights conferred by the trademark and the mere usage right granted by the domain registrar.

4. Conflict Between Trademark and Domain Name

4.1. Premises of the Conflict and the Concept of “Cybersquatting”
Legal conflict between a trademark and a domain arises when a domain name is identical or similar to a pre-existing trademark and is used for commercial purposes without the consent of the trademark owner.

The phenomenon of cybersquatting, recognized in international doctrine, refers to the bad-faith registration of a domain reproducing a well-known trademark with the aim of reselling it to the legitimate holder, attracting traffic through confusion, or obtaining unjustified benefits.

Such practices may constitute acts of unfair competition, trademark infringement, or abusive use of distinctive signs.

4.2. Criteria for Conflict Analysis
In assessing collisions between trademarks and domains, courts and arbitration bodies (such as the WIPO Arbitration and Mediation Center) consistently apply the following criteria:

• Identity or similarity between the domain and the trademark, analyzed with regard to the likelihood of confusion.
• Absence of a right or legitimate interest on the part of the domain holder (e.g., lack of a bona fide commercial activity under the name).
• Existence of bad faith in registration or use (e.g., intent to sell the domain to the trademark owner).

These criteria are expressly codified by the Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by ICANN and applied by WIPO.

4.3. Relevant Case Law
European and Romanian case law consistently favors trademark holders.

For instance, in WIPO Case D2000-0003 (Telstra Corporation Ltd. v. Nuclear Marshmallows), it was held that mere passive possession of a domain identical to a well-known trademark can constitute evidence of bad faith.

In Romania, courts have repeatedly ordered the transfer of domains in favor of trademark holders, noting that unauthorized use creates consumer confusion and damages reputation.

5. Legal Protection of Trademark Holders Against Domain Name Conflicts

5.1. Trademark Infringement Action
A trademark holder may initiate civil action for infringement against a domain name holder, seeking:

• Cessation of domain use;
• Deletion or transfer of the right of use of the domain;
• Compensation for material and moral damages.

Romanian courts have held, pursuant to Article 36(2) of Law no. 84/1998, that the use of a trademark within a domain constitutes “use in the course of trade,” which may be prohibited when it affects the functions of the mark.

5.2. Alternative Dispute Resolution Procedures (UDRP)
Unlike generic top-level domains (.com, .net, .org, etc.), which are uniformly subject to the UDRP administered by the World Intellectual Property Organization (WIPO), the legal regime of national .ro domains is governed by ROTLD rules under the authority of ICI Bucharest.

Currently, ROTLD does not provide a formal Alternative Dispute Resolution (ADR) mechanism comparable to the UDRP, which would allow administrative resolution of .ro domain disputes through transfer or cancellation decisions. ROTLD policies only provide administrative procedures regarding registration, data validation, and suspension, without granting the registry the competence to assess bad faith or infringement of intellectual property rights.

Therefore, trademark holders alleging infringement by a .ro domain may pursue:

• Judicial action before competent courts, under Law no. 84/1998 on trademarks and geographical indications and provisions on unfair competition;
• Mediation or arbitration procedures, if the parties agree, aimed at obtaining voluntary domain transfer;
• Direct negotiation with the domain holder, followed by a cession or transfer agreement of the right of use.

In the absence of an institutionalized national ADR procedure, courts remain the exclusive authority competent to order the transfer, cancellation, or prohibition of use of a .ro domain conflicting with a registered trademark.

The relationship between trademarks and domain names represents one of the most significant challenges in contemporary intellectual property law. While a trademark constitutes a statutory industrial property right, a domain name is a contractual right of use with potential interference with protected trademark values.

The collision of these two regimes necessitates normative harmonization and a teleological interpretation of existing rules, aimed at balancing the freedom of electronic commerce with the protection of intellectual property rights.

Trademarks and domain names, although originating from distinct legal spheres, exist in a functional interdependence within the current digital economy. Coherent and balanced protection of both is essential to ensuring legal certainty and fair competition in the online environment.

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