An effective anti-counterfeiting strategy online combines three tools: domain recovery through the UDRP to take the name back, notice-and-takedown requests to get the infringing site or listing removed quickly, and trade mark action in court when you need damages, an injunction or the goods themselves. Each tool solves a different problem, so the question is not which one to use but in what order. This guide is for brand owners dealing with counterfeit shops, lookalike domains and payment fraud across Europe and Latin America.
Key takeaways
- The UDRP recovers or cancels the domain, nothing more: no damages, no order against the goods.
- A takedown notice to the host or platform is usually the fastest way to stop a live counterfeit site; in the EU, the Digital Services Act sets what a notice must contain.
- Only a court can award damages and order infringing goods withdrawn; Spanish trade mark law expressly covers use of a sign as a domain name.
- WIPO documented a 2025 case in which a lookalike domain almost diverted USD 800,000 through fraudulent payment emails.
Why counterfeits online need more than one tool
A counterfeit operation rarely depends on a single asset. It uses a domain that looks like yours, a hosting provider or marketplace for the shop, email accounts on the same domain and, behind it, physical goods or a payment scheme. Removing one piece leaves the others in place.
The WIPO Center’s report of 14 January 2026, which recorded more than 6,200 domain name cases in 2025, illustrates the point. In case D2025-3149, a domain imitating General Electric (gearerospaces.com) was used to email the company’s business partners about an “engine sales agreement” in a scheme that almost diverted USD 800,000; the panel ordered the domain transferred on 26 September 2025. In D2025-3338, a domain containing IBM’s mark and a mail server was used to impersonate an employee in Italy and request payments from clients. In both, recovering the name stopped future misuse, but it did not, by itself, recover money or identify who was behind the scheme.
UDRP, takedowns and court action compared
| Tool | What it achieves | Legal basis | Speed and cost | Limits |
|---|---|---|---|---|
| UDRP complaint | Transfer or cancellation of the domain | UDRP Policy, para. 4 | Around two months on the Rules’ deadlines; WIPO fee USD 1,500 for 1 to 5 domains, or USD 4,000 for the one-month expedited track | No damages; only gTLDs and ccTLDs that adopted it |
| Uniform Rapid Suspension (URS) | Suspension of the domain for the rest of its registration | ICANN URS Procedure | Lock within 24 hours; decision targeted within days of examination | New gTLDs only; clear and convincing evidence; no transfer |
| Notice to host or platform | Removal of the counterfeit page or listing | EU Digital Services Act, Arts. 6 and 16; provider terms | Often the fastest; no official fee | The domain stays with the infringer, who can move hosts |
| Abuse report to registrar | Mitigation, such as suspension | ICANN contracts since 5 April 2024 | Depends on the registrar | Covers DNS abuse such as phishing and malware, not counterfeiting as such |
| Trade mark action in court | Injunction, damages, withdrawal of goods | National law, e.g. Spanish Law 17/2001, Arts. 34 and 41 | Months or longer; court and professional costs | Needs a defendant and jurisdiction |
When to recover the domain with the UDRP
Use the UDRP when the domain itself is the problem: it reproduces your mark, it is likely to be reused, and you want it under your control. Paragraph 4(a) of the UDRP Policy requires you to show that the domain is identical or confusingly similar to your mark, that the holder has no rights or legitimate interests, and that it was registered and is being used in bad faith. Attracting users for commercial gain by creating confusion with your mark is one of the listed examples, and a counterfeit shop usually fits it.
Ask for transfer, not cancellation: a cancelled name returns to the market. Under WIPO’s fee schedule, a single-panelist case for one to five domains costs USD 1,500, and the expedited service announced on 9 March 2026 costs USD 4,000 and commits to a decision within one month. Country-code domains may follow their own procedures, such as the one for .es.
When to ask for a takedown
When a counterfeit site is live and taking orders, every week counts. A takedown request to the hosting provider or marketplace is usually the quickest remedy. In the EU, the Digital Services Act (Regulation (EU) 2022/2065), applicable since 17 February 2024, requires hosting providers to offer a notice-and-action mechanism (Article 16). A notice should give a reasoned explanation of why the content is illegal, the exact URLs, your name and email, and a statement of good faith. A sufficiently precise notice gives the provider knowledge of the illegal content; if it then fails to act promptly, it loses the liability exemption in Article 6.
Where the domain is used for phishing or fraudulent email, report it to the registrar as well: since 5 April 2024, ICANN’s amended agreements oblige gTLD registrars with actionable evidence of DNS abuse, which includes phishing, to take prompt mitigation action.
When to go to court
Court action is the only route to damages, to orders covering conduct beyond the domain and to withdrawal of infringing goods. In Spain, Law 17/2001 on Trade Marks lets the owner prohibit use of the sign in telematic networks and as a domain name (Article 34.3.f) and claim cessation, damages and removal of goods from the market (Article 41). Litigation makes sense when the infringer is identifiable, the losses are material or the network is large enough that domain-by-domain enforcement will not end it.
What this means for your business
- Preserve evidence first: dated screenshots, test purchases, email headers, payment details and WHOIS data.
- Stop the harm: send takedown notices to hosts and platforms and abuse reports to registrars on the same day.
- Secure the name: file a UDRP or ccTLD complaint, or a URS in new gTLDs if speed matters more than ownership.
- Escalate where justified: court action for damages and goods, coordinated with customs and payment providers.
- Monitor: new lookalike registrations usually follow a successful takedown.
If you need these steps run as one plan, our team for anti-counterfeiting and domain recovery through the UDRP works with our IP enforcement and litigation team on the court side.
Where companies get this wrong
- Sending a warning letter before securing evidence. The infringer may move the site, transfer the domain or delete pages.
- Recovering the domain and stopping there. The goods, the payment channel and the people behind them remain.
- Choosing cancellation over transfer, so the same name is registered again within days.
- Targeting legitimate resellers or fair commentary, which can lead to a finding of reverse domain name hijacking under the UDRP.
- Working with separate advisers per country, so evidence, deadlines and arguments do not line up.
Frequently asked questions
Can I recover a counterfeit website’s domain through the UDRP?
Yes, if the domain is identical or confusingly similar to your trade mark, the holder has no rights or legitimate interests, and the domain was registered and is being used in bad faith. Selling counterfeits under your brand typically shows bad faith. The panel can order transfer or cancellation, but not damages or the removal of goods.
Is a takedown faster than a UDRP complaint?
Usually, yes. A precise notice to the host or marketplace can remove a page quickly, and in the EU the Digital Services Act requires hosting providers to process notices diligently. However, the infringer keeps the domain and can move the site elsewhere, so a takedown is often combined with a UDRP or ccTLD complaint.
Can I claim damages from a counterfeiter who used my brand in a domain?
Only in court. The UDRP and most ccTLD procedures only transfer or cancel the domain. In Spain, for example, Law 17/2001 on Trade Marks lets the owner claim cessation, damages and withdrawal of goods, and expressly covers use of the sign as a domain name.
Can IP Global Guard coordinate takedowns, UDRP and court action?
Yes. We preserve the evidence, send takedown notices and abuse reports, file UDRP, URS or ccTLD complaints and coordinate court action where needed, directly where our professionals are qualified and otherwise through qualified local correspondents across Europe, Latin America and Africa, all from a single point of contact.
How IP Global Guard can help you shut down counterfeits
Online counterfeiting is fought on several fronts at once, and the results depend on doing them in the right order. IP Global Guard, the IP services line of META Channel Corporation Limited, combines domain recovery, takedowns and trade mark enforcement with one strategy across more than 25 jurisdictions; see our coverage in Europe, Latin America and Africa.
Share the infringing domains, the sites or listings and your trade mark registrations. We will tell you which tool to use first and coordinate the rest. Send us the details of the infringement.
This article is general information, not legal advice, and does not replace an assessment of your specific case.
Sources
- WIPO, 2025 record year for domain name disputes (14 January 2026)
- WIPO, General Electric Company v. kreardon james, Case No. D2025-3149 (26 September 2025)
- WIPO, International Business Machines Corporation v. Raphael Philippe, Case No. D2025-3338 (20 October 2025)
- ICANN, UDRP Policy (updated 21 February 2024)
- WIPO Center, UDRP fee schedule (valid as of 1 December 2002)
- WIPO, Updated UDRP fee schedule and new services (9 March 2026)
- ICANN, Uniform Rapid Suspension (URS) procedure (updated 21 February 2024)
- ICANN, 2024 global amendments to the RAA and base gTLD Registry Agreement (effective 5 April 2024)
- Regulation (EU) 2022/2065 (Digital Services Act), OJ L 277 of 27 October 2022 (BOE copy)
- BOE, Law 17/2001 of 7 December on Trade Marks (consolidated text)
