Domain name buyback: amicable negotiation or legal action?

Your brand name or trade name is already registered as a domain name by a third party. How can you recover this name, and which strategy should you adopt? This article guides you step by step through the legal options available under French law.

In France, the registration of a domain name is based on the first come, first served principle. This simple principle nevertheless gives rise to very frequent problematic situations for companies, SME/VSE managers and digital project holders: a third party has registered a domain name that is identical or very close to your trademark, your corporate name or your business sign, and exploits this position to free-ride on your business, harm your reputation or force you to buy back the name at an exorbitant price.

This phenomenon, known as cybersquatting or typosquatting depending on the case, is one of the most common disputes in the field of digital law. Faced with this situation, two main strategies are available to you: the amicable or out-of-court route, and the litigation route before the courts. The choice between these two options depends on several factors that the Mirabile Avocat law firm helps you analyse precisely.

What is a domain name and why is it so strategic?

A domain name is the unique address that identifies a website (for example « monentreprise.fr »). It is composed of a label (the distinctive part) and an extension (the TLD or Top-Level Domain: .fr, .com, .eu, .net, etc.). Legally, the domain name is not an intellectual property right in the strict sense, but it is indirectly protected by numerous provisions of French positive law.

Its strategic value is considerable: it determines your company's SEO visibility, its brand image online, the trust of clients and partners, and may constitute a significant intangible asset on a company's balance sheet. Losing your domain name to a competitor or a malicious third party can represent major commercial harm.

Who manages domain names in France?

For .fr names, it is AFNIC (Association Française pour le Nommage Internet en Coopération) that acts as the registry. Generic extensions (.com, .net, .org) are managed by ICANN through accredited registrars. The .eu extension falls under EURid. Each registry has its own rules and dispute resolution procedures.

On what legal grounds can a domain name be challenged?

Before taking action, it is necessary to identify the legal ground or grounds on which your claim is based. Under French law, several texts allow the registration or use of a disputed domain name to be challenged.

Trademark infringement (Intellectual Property Code)

This is the most effective ground. Under Articles L. 713-2 and L. 713-3 of the Intellectual Property Code, the holder of a registered trademark may prohibit any third party from using, without its consent, a sign that is identical or similar for identical or similar goods or services, where there is a likelihood of confusion in the mind of the public. The use of a domain name reproducing a registered trademark constitutes such a use.

Article L. 716-1 of the Intellectual Property Code qualifies any infringement of the trademark holder's rights as counterfeiting. The sanction may include damages, the deletion or transfer of the domain name, or even a criminal conviction in the most serious cases.

Caution: protection through a trademark requires that it has been validly registered with the INPI (for French trademarks) or the EUIPO (for European Union trademarks) before the registration of the disputed domain name. An unregistered trademark does not allow infringement to be invoked.

Unfair competition and free-riding (Article 1240 of the Civil Code)

If you do not have a registered trademark, you may take action on the ground of unfair competition or free-riding based on Article 1240 of the Civil Code. This is a tortious civil liability action based on fault, harm and the causal link.

French case law recognises that the registration of a domain name reproducing a corporate name, a trade name or a well-known business sign of a competitor constitutes an act of unfair competition or economic free-riding, capable of engaging the liability of its author.

Protection of the trade name and the business sign

The corporate name, the trade name and the business sign are distinctive signs protected by common law and by the Commercial Code. Their unauthorised use in a domain name may constitute an infringement of these rights, independently of any trademark. The notoriety of the sign, its seniority and the existence of a likelihood of confusion are decisive factors assessed by the judges.

Infringements of well-known trademarks

For well-known or reputed trademarks within the meaning of Article L. 713-3 of the Intellectual Property Code, protection is extended: it applies even in the absence of a likelihood of confusion and without identity of goods or services. A well-known trademark may thus oppose the registration of a domain name that is similar to it, even in a different field of activity.

What amicable resolution options are available to recover a domain name?

Before considering legal action, which can prove lengthy and costly, several amicable or alternative routes to litigation exist. They often offer the advantage of being faster, less expensive and sometimes more effective.

Direct negotiation: simple but risky

The first step is often to contact the domain name holder directly to propose an amicable buyback. Information about the holder is in principle available through the WHOIS databases of the registries. Since the entry into force of the GDPR, this data is often anonymised, but it is possible to send a request via the host's contact form.

This direct approach nevertheless entails significant risks: revealing your interest in the name may encourage the holder to increase their price demands. It is therefore strongly recommended to call on a lawyer to lead this negotiation, by first defining a strategy and a budget cap.

The SYRELI procedure for .fr names

For domain names in .fr, AFNIC has offered since 2011 a specific out-of-court procedure: SYRELI (Système de Résolution des Litiges). This procedure is governed by Decree No. 2019-1185 of 15 November 2019relating to the management of domain names falling under the top-level domain corresponding to the country code of France.

Any person justifying a legitimate interest and acting in good faith may refer the matter to the AFNIC board to request the deletion or transfer of a .fr domain name. The board renders a decision within approximately two months. The cost of the procedure is 250 euros excluding tax (current rate). The decision may, however, be challenged before the courts within a period of fifteen days.

Practical example: an SME in the food sector files a SYRELI request against the holder of a .fr domain name reproducing its trademark registered with the INPI. The AFNIC board recognises the trademark infringement and orders the transfer of the domain name within two months, for a total cost of 250 euros, without any legal proceedings.

The UDRP procedure for generic extensions (.com, .net, .org...)

For generic extensions, the reference procedure is the UDRP (Uniform Domain-Name Dispute-Resolution Policy), set up by ICANN. In France it is administered by the WIPO Arbitration and Mediation Center (World Intellectual Property Organization). It allows the transfer or deletion of a domain name to be obtained within approximately 45 to 60 days.

To succeed in a UDRP procedure, the complainant must demonstrate three cumulative elements: (1) the domain name is identical or similar to a trademark in which it holds rights; (2) the holder of the domain name has no right or legitimate interest in that name; (3) the domain name was registered and is being used in bad faith. This procedure does not allow damages to be obtained.

The ADR procedure for .eu names

For domain names in .eu, EURid has its own out-of-court procedure, the ADR (Alternative Dispute Resolution), administered by the Prague Cyber-Mediation Centre. The principles are close to the UDRP but adapted to the European framework. Commission Regulation (EC) No. 874/2004 governs this procedure.

When should legal action be considered to recover a domain name?

The legal route becomes necessary when the amicable route has failed, when the harm is significant, or when you wish to obtain damages in compensation for the harm suffered. It is also required when the domain name holder is anonymous and refuses all contact, or when urgent interim measures are necessary.

Which court has jurisdiction?

In domain name matters, jurisdiction depends on the ground of the action. For a trademark infringement action, the judicial court has jurisdiction, but specialised courts have been designated for this type of dispute (for example, the Paris Judicial Court has a chamber specialised in intellectual property). For an unfair competition action, the commercial court may have jurisdiction if both parties are traders.

In international matters, the rules of jurisdiction are more complex. In principle, the French courts have jurisdiction if the disputed website targets the French public, if the harm occurs on French territory, or if the defendant is domiciled in France.

What measures can be obtained in court?

The judge may order:

• The transfer of the domain name to the claimant, which constitutes the most direct and most sought-after outcome.
• The deletion of the domain name, a less favourable but possible solution where transfer is not appropriate.
• Damages in compensation for the commercial harm suffered, which may include loss of turnover, image harm and moral harm.
• Interim measures in summary proceedings (immediate prohibition on using the domain name), pending a judgment on the merits, where the disturbance is manifest and the urgency is established.
• The publication of the decision in newspapers or on the internet to remedy the harm to reputation.

Summary proceedings: a tool to act quickly

When urgency is established (for example, the competitor exploits the domain name to divert your clientele or actively harm your reputation), it is possible to refer the matter to the summary proceedings judge urgently. The judge may, within a few days or weeks, order provisional measures: prohibition on using the domain name, an injunction ordering the host to block access to the website, or evidentiary summary proceedings to have the disputed facts recorded via a bailiff.

Practical example: an e-merchant notices that a competitor has registered a domain name very close to its own and redirects internet users to its own shop. It refers the matter to the summary proceedings judge who urgently orders the suspension of the domain name and the cessation of the redirection, pending a judgment on the merits. This decision is rendered in 15 days.

Dispute resolution for a domain name

Direct negotiation

Amicable

The data presented is indicative and subject to change depending on the jurisdictions and the circumstances of each case. This table does not constitute legal advice.

How to choose between amicable negotiation and legal action?

The choice of strategy depends on a precise analysis of your situation. Several criteria must be taken into account:

• The strength of your prior rights: do you have a registered trademark? A well-known corporate name? The seniority and geographical scope of your rights are decisive.
• The nature and behaviour of the third party: is it a competitor acting in bad faith or a person who registered the domain name in good faith for a legitimate use? A malicious competitor requires a firm legal response.
• The urgency of the situation: does the active exploitation of the disputed domain name cause immediate and serious harm? If so, the summary proceedings route is required.
• The available budget: the amicable route (SYRELI, UDRP) is markedly less costly than legal proceedings, the costs of which can quickly exceed several thousand euros.
• The objective sought: if you only wish to recover the domain name, the amicable route may suffice. If you also wish to be compensated, only the legal route allows this.

What are the pitfalls to absolutely avoid in a domain name dispute?

Mistakes made in the first hours or days of a domain name dispute can have lasting consequences on the outcome of the procedure. Here are the main pitfalls to avoid.

Failing to gather evidence before taking action

Before any step, it is imperative to preserve and have the evidence recorded of the infringement: time-stamped screenshots of the disputed website, bailiff's report, backup of the WHOIS data, copies of exchanges with the third party. These elements are essential for any judicial or out-of-court procedure. Once the website is modified or deleted, the evidence disappears.

Forgetting to file your trademark in advance

The best protection remains the preventive filing of a trademark with the INPI or the EUIPO, ideally before the launch of any commercial activity. A registered trademark confers on you an intellectual property right enforceable against all and considerably facilitates the procedures for recovering a disputed domain name. The filing costs around 190 euros for one class of goods or services at the INPI.

Acting too quickly without a defined strategy

Contacting the holder directly without having first defined a strategy can backfire on you. If you reveal from the outset that you are prepared to pay a high price, the third party may take advantage of it. It is preferable to appoint a lawyer to conduct the negotiations or to refer the matter directly to AFNIC or WIPO if the rights are clearly established.

Confusing deletion and transfer

Some claimants request the deletion of a domain name when in reality they wish to keep it for their own use. It is necessary to explicitly formulate a transfer request in out-of-court procedures, as the decision cannot go beyond what is requested.

A concrete example to illustrate the approach

Let us take the case of an SME specialised in the manufacture of high-end furniture, whose trademark « MaisonElégante » has been registered with the INPI since 2019 in classes 20 (furniture) and 35 (online sales). In 2024, it discovers that a website « maisonelegante.com » has been registered by an unknown third party, who sells counterfeit goods under this sign.

Analysis: the trademark predates the domain name. There is an obvious likelihood of confusion and commercial exploitation in bad faith. The harm is immediate (diversion of clientele, harm to reputation).

Strategy adopted with the Mirabile firm:

1. Immediate bailiff's report of the website and screenshots.
2. Summary proceedings before the Paris Judicial Court to obtain the suspension of the website pending the judgment.
3. Filing of a UDRP procedure before WIPO for the transfer of the domain name.
4. Action on the merits for trademark infringement and unfair competition to obtain damages.

Result: suspension of the website in 3 weeks, transfer of the domain name in 2 months, and an order against the third party to pay 25,000 euros in damages.

How does the Mirabile Avocat law firm support you in a domain name dispute?

The Mirabile Avocat law firm intervenes at every stage of your process, from the initial analysis of the situation through to the resolution of the dispute, whether amicable or judicial.

The preliminary legal audit

The first step is a complete audit of your situation: identification and assessment of your prior rights (trademarks, corporate name, business sign, domain names already filed), analysis of the third party's behaviour (bad faith, commercial exploitation, attempted extortion), and assessment of the harm suffered or potential. This audit makes it possible to define the legal strategy best suited to your case.

Conducting the amicable negotiation

If the amicable route is favoured, the firm takes charge of the drafting and sending of formal notices to the domain name holder, the conduct of negotiations on behalf of your company, and the securing of any agreement through a written contract setting out the terms of transfer, the assignment price where applicable, and the guarantees against any subsequent recourse.

The filing and follow-up of out-of-court procedures

The firm supports you in the filing and follow-up of SYRELI, UDRP or ADR procedures, by drafting the claim submissions, gathering the necessary evidence, and representing you before the decision panels. A poorly drafted procedure can lead to a rejection, even if your rights are clearly established.

Legal action and emergency summary proceedings

When the legal route is required, the firm provides your representation before the competent courts, in particular for actions for trademark infringement, unfair competition or free-riding. It can also defend you in the context of emergency summary proceedings to obtain immediate provisional measures, and ensures the follow-up of the enforcement of decisions, including injunctions issued to registrars and hosts.

The preventive protection strategy

Beyond the dispute, the firm advises you on a comprehensive preventive protection strategy: trademark filing, registration of your strategic domain names in several extensions (.fr, .com, .eu, .net), monitoring of competing trademark filings, and drafting of usage charters for your digital assets.

Conclusion: do not let a third party appropriate your digital identity

The buyback or recovery of a domain name is a complex legal issue that requires a precise analysis of your rights, a clear strategy and rigorous implementation. The amicable route (direct negotiation, SYRELI, UDRP) is often the fastest and least costly, but it does not allow financial compensation to be obtained. The legal route, longer and more expensive, remains indispensable as soon as the harm is significant or urgent interim measures are necessary.

In all cases, intervening early and with the support of a lawyer specialised in digital law is the best guarantee of a favourable outcome. The Mirabile Avocat law firm is at your disposal to analyse your situation and define the strategy best suited to your challenges.