Using the trademark as a domain name

The invention of the Internet and spreading of it quickly in people's private lives make Internet important in the eyes of companies. In the early periods of Internet, big companies build websites to create awareness of their goods and services by reaching people easily in their private times. In the ongoing process, e-commerce portals were established in an attempt to sell goods and services over the Internet. In the present time, the market coverage rate of e-commerce is quite high. Thanks to the Domain Names System, use of words instead of numeric IP addresses has raised the importance of Domain Names. The DNS is important, because a word could be registered as a domain name under the one TLD (.com, .net, etc.) by only one person. For this reason, especially big companies have been forced to register their trademarks as domain names in order to be known and identified with their trademarks at Internet. Malicious people have registered the trademarks of third parties as domain names without having a legitimate right or a legitimate connection. (Domain grabbing, cyber-squatting etc.) Even if there is no malicious intent, the registration of any sign, which is identical or similar with already existing any trademark, can cause the trademark infringement. Domain names are not only advertising channel but also, they have a distinguishing sign, and these make them both valuable and important. Hereby this value and importance of web sites (domain names) makes itself important as legal perspective. Various regulations have been made to protect both web sites and persons affected by activities carried out via web sites, at legal area. For example, in Turkish law, various regulations have been made in the Protection of Trademarks Decree Law no. 556(it was abrogated in 2016) and in the Industrial Property Law no. 6769 in order to prevent the trademark infringement through using the trademark as a domain name. It is crucial to state that there are not any regulations at European Union Regulation no. 2015/2424 (which the Industrial Property Law no. 6769 is quoted from) about using the trademark as a domain name. In accordance with the law no. 6769, trademark right holder is entitled to prevent using the trademark as a domain name in case of using the sign is identical with or similar to the trademark at Internet in a way to cause the commercial effect without a valid reason. Essential-and priority- condition of using the aforesaid right by trademark right holder is to use the trademark as a domain name in a way to cause the commercial effect without a valid reason. Another condition is the identity or similarity of goods or services to one another. In the light of these conditions, the first thing that should be done is deciding if there is any commercial effect or not. The second thing is that identity or similarity of the goods or services must be determined with the exception of well-known (famous) trademarks. Because, the Turkish lawmakers have attributed to article 7/2 of the Industrial Property Law no. 6769 in point of preventing to use of trademark as a domain name, by trademark right holder. In accordance with article 7/2 of the Industrial Property Law no. 6769, trademark right holder entitled to prevent using the trademark in the following cases: (i) "the sign is identical with the trademark and is used in relation to goods or services which are identical with those for which the trademark is registered" or (ii) "the sign is identical with, or similar to, the trademark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trademark is registered, if there exists a likelihood of confusion on the part of the public" or (iii) "the sign is identical with, or similar to, the trademark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the trademark is registered, where the latter has a reputation in the Turkey Republic and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark." As it is seen from article 7/2, in order to be prevented using the trademark as a domain name, it must be determined that goods or services which are identical with, or similar to, the goods or services for which the trademark is registered, except for well-known trademarks. As a rule, in order to be determined goods or services which are identical with, or similar to, the goods or services for which the trademark is registered, the web site content must be considered. However, for some cases, there is no need to consider web site content exclusively. In conclusion, we explained the importance of the content of websites, in which conditions the content of websites should be considered or not, and this explanation is supported by doctrinal opinions, national and international jurisprudence in this dissertation study. Keywords: Domain Names, Commercial Effect, Trademark, Web Sites.