Someone Registered a Domain Name Matching My Brand: Is That Legal?

This page is a translation of the original Portuguese text, provided for convenience. It deals with Brazilian law. If there is any discrepancy, the Portuguese version prevails. Read the original in Portuguese

Registering an internet address that copies someone else’s trademark is no longer a simple matter of first come, first served. When the registration is used to exploit another party’s reputation, block a competitor, or force a profitable sale, it amounts to domain hijacking, a practice Brazil combats through both administrative and judicial channels.

What Counts as Domain Hijacking

Domain name registration generally works on a priority basis: whoever first requests an available address gets it. This principle, known as “first come, first served,” speeds up the technical allocation of addresses online. It does not, however, permit anyone to use the system to capture distinctive signs that belong to another person or company.

Domain hijacking occurs when someone takes advantage of this logic to register, in bad faith, an address that reproduces or imitates a third party’s trademark, business name, or personal name. The most common forms include registering a domain identical to a well-known brand in order to resell it to the owner at a high price; creating variations with small typos to divert traffic from people who mistype the address; and purely defensive registrations, made only to stop the rightful party from using its own name.

The harm is rarely just symbolic. A domain directs customers, supports marketing campaigns, anchors corporate e-mail, and concentrates a reputation built over years. Losing control of that address, or seeing it point to content unrelated to your business, diverts customers, confuses consumers, and puts your brand’s image at real risk. In sectors where customer trust is decisive, such as services and e-commerce, the damage can far exceed the cost of recovering the address.

Domain Names and Registered Trademarks: Separate Rights

One point often goes unnoticed by people who register an address: obtaining a domain does not, by itself, give you any right to the corresponding trademark. A trademark registration is granted by the INPI (Brazil’s National Institute of Industrial Property). It gives the owner exclusive use of the sign throughout the national territory, within the relevant field of activity, under the Industrial Property Law (Law 9.279/96). A domain registration, by contrast, is a technical grant administered by Registro.br (the registry for Brazil’s “.br” domains), which does not examine trademark ownership when it grants an address.

The conflict arises when the domain reproduces or imitates a sign that is already protected. In that situation, the owner of the registered trademark has priority based on its exclusive right, and the mere fact that someone else obtained the address first does not validate the abuse. Priority in domain registration yields to an earlier, lawfully established trademark right.

Protection is broader in specific situations. A famous mark (marca de alto renome) registered with the INPI is protected in all fields of activity, and a mark that is well known in its sector receives protection even without prior registration in Brazil, under the Paris Convention. In these cases, the strength of the distinctive sign makes the bad faith of whoever captures it as a domain even more evident.

This distinction shapes the entire recovery strategy. Before acting, the owner must show that it holds the distinctive sign, whether through an INPI registration, a pending application, or proven prior use, and only then can it assert that right against whoever controls the disputed domain.

In sectors where customer trust is decisive, such as services and e-commerce, the damage can far exceed the cost of recovering the address.

The Administrative Dispute Through SACI-Adm

For domains ending in “.br,” there is a dedicated route that is faster than a lawsuit: the Administrative Internet Conflict Resolution System, known as SACI-Adm, established under the Brazilian Internet Steering Committee. The procedure is handled by accredited specialized panels, including the Domain Name Dispute Resolution Chamber, linked to the Brazilian Intellectual Property Association, and recognized arbitration and mediation centers.

To succeed, the complainant must show two elements together. The first is that the domain is identical or similar enough to cause confusion with a trademark, business name, personal name, or other sign over which the complainant holds rights. The second is that the domain was registered or used in bad faith, a circumstance shown by objective indicators that the panel evaluates.

Recognized indicators of bad faith include registering the address in order to sell, rent, or transfer it to the owner of the sign at a disproportionate price; registering it to prevent the owner from using its own name; an intent to harm a competitor’s business; and using the address to attract users through confusion for the registrant’s own commercial gain.

If the registration is found abusive, the decision orders the domain transferred to the complainant or canceled. SACI-Adm, however, does not award damages; it is limited to deciding the fate of the domain. For international generic domains, such as those ending in “.com,” an equivalent global system applies, handled by recognized arbitration centers, with similar logic: identity or similarity combined with bad faith.

Court Remedies and Recovering the Address

Recovery begins with gathering evidence. That means collecting the trademark registration certificate or proof of the INPI application, evidence of earlier use of the sign, the domain’s history, screenshots of the hosted content, and any communication that reveals an intent to sell or to block you. The sooner this material is preserved, the lower the risk that the infringer will change the site’s content and weaken the proof of bad faith.

A formal out-of-court notice is usually the first step. It puts the demand to stop using the domain and return it in writing, and it can resolve the standoff without litigation. It does require caution, though, so as not to feed the extortion strategy of someone who registered the address only to negotiate it at an unrealistic price.

If the conflict continues, going to court allows you to seek not only an order to stop using the domain and to transfer it, but also damages for diverted customers and harm to your image. The owner may request urgent injunctive relief (tutela de urgência) to block the address quickly when there is a risk of immediate harm to the brand, a measure that stops the damage from continuing while the case is pending.

Choosing between the administrative and judicial routes depends on your goal. If you only want to take back the address quickly and at a predictable cost, SACI-Adm is an efficient tool. If you also want compensation, or your case is more complex, you will likely prefer the courts, which combine recovery and compensation in a single proceeding.

How to Prevent Domain Hijacking

The best defense is preventive, and it begins before your business gains visibility. Registering your trademark with the INPI as early as possible is the legal foundation of any future dispute, because that registration secures exclusivity enforceable against third parties and supports both an administrative complaint and a lawsuit.

At the same time, it is wise to secure the matching domains under the main extensions, protect strategic variations of your name, and monitor new similar registrations that appear on the market. Monitoring lets you react early, when recovery is simpler and the damage is still contained, before the address becomes entrenched in someone else’s hands.

This preventive approach significantly reduces your exposure to hijacking and strengthens the owner’s position. Documenting every registration and renewal, with dates and receipts, completes the protection and makes proof easier in case of a dispute. When trademark registration and domain registration go hand in hand from the start, there is little room left for the opportunist.

Frequently Asked Questions

Does registering the domain first give me rights over the trademark?

No. Domain registration is a technical grant and does not confer trademark rights. Whoever holds a trademark registered with the INPI, or can prove earlier use of the sign, keeps priority, and being first to register the domain does not validate a bad-faith registration by someone who does not own the distinctive sign.

How long does an administrative domain dispute take?

The SACI-Adm administrative route was designed to be faster and cheaper than a lawsuit, and cases are generally resolved within a few months, depending on the procedure’s deadlines and the panel chosen. The complexity of the case and whether the other party files a response directly affect the length.

Can I seek compensation for domain hijacking?

Yes, but through the courts. SACI-Adm decides only whether the domain is transferred or canceled, without awarding any amounts. To seek damages for diverted customers or harm to your image, the owner must turn to the judiciary, where the compensation claim can be combined with the recovery of the address.

As informações deste artigo são de caráter informativo e não substituem consulta jurídica individualizada. Cada caso possui particularidades que exigem análise específica.