The Domain Name and the Trademark's Exclusive Right
Using a domain name that matches or resembles another person's registered trademark is one of the forms of using the mark in civil circulation. Georgian legislation does not provide, in these norms, a separate arbitral or administrative procedure for domain disputes — international mechanisms linked to registrars of other countries are not contemplated by Georgian law. The dispute is resolved within the general framework of the Georgian Law on Trademarks: the holder's exclusive right to a trademark protected by registration arises from the day the mark is registered, and it is this right that determines who may use the given designation on the internet.
Below we explain when the use of a domain counts as an infringement of the right in the mark, which acts are prohibited, and what remedies the right holder has.
When Domain Use Is an Infringement
Under Article 6 of the Law, the holder of the exclusive right may prohibit a third person from using, without consent, in civil circulation a sign that stands in the following relation to the protected trademark: the sign is identical and the goods are identical; the sign is identical and the goods are so similar that a likelihood of confusion, including confusion through association, arises; the sign is similar and the goods are identical or so similar that a likelihood of confusion again arises; or the sign is identical or similar and has a reputation in Georgia, where its use unjustifiably gives the third person advantageous conditions or damages the mark's reputation or distinctiveness. A domain name that reproduces the protected mark or creates a likelihood of confusion is assessed within exactly this framework.
Prohibited Acts
The same article establishes that, in addition to other possible prohibitions, it is forbidden to affix the trademark on goods or their packaging; to offer, put into circulation, store for that purpose, import or export goods bearing the mark; to offer or provide services using the mark; to use the mark in advertising or on business documents; and to use the trademark as a firm name or part of one. Without the holder's consent a third person may not affix an identical or similar sign on a label, tag or any other medium, nor offer for sale, put into circulation, store, import or export packaging, labels or tags bearing such a sign. A website and its address containing the mark count as advertising or business use — which is why using a mark in a domain name falls within the scope of these prohibitions.