homepage Welcome to WebmasterWorld Guest from 50.17.86.12
register, free tools, login, search, pro membership, help, library, announcements, recent posts, open posts,
Pubcon Platinum Sponsor 2014
Home / Forums Index / WebmasterWorld / Domain Names
Forum Library, Charter, Moderators: buckworks & webwork

Domain Names Forum

    
How to shut down .co.uk and .de US Trademark Infringement
We own the .com verions and have Trademark
SevanB2

10+ Year Member



 
Msg#: 1811 posted 3:14 am on Mar 11, 2004 (gmt 0)

We have a trademark on our company name and own .com/.net/.org as well as the domains with dashes. We have been in business since 1998. A company in UK, registered .co.uk version of our name about 2 years ago. His website services and even the layout are almost identical to ours. We are one of the top players in our industry and have a good brand name.

Is there anyway I can get this domain back without too much cost. What do .co.uk rules say about this?

We have the same problem with a company in Gremany having .de domain.

 

rfgdxm1

WebmasterWorld Senior Member rfgdxm1 us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 1811 posted 3:25 am on Mar 11, 2004 (gmt 0)

[icann.org...]

DO be aware it'll cost you over a thousand dollars (US) for each domain you dispute to get the ball rolling, so hopefully you can afford that.

SevanB2

10+ Year Member



 
Msg#: 1811 posted 3:28 am on Mar 11, 2004 (gmt 0)

I know about ICANN domain dispute policy, but do they have any authority over .co.uk and .de domains and does a US Trademark owner have the rights to those?

PCInk

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 1811 posted 9:51 am on Mar 11, 2004 (gmt 0)

Did you register the trademark in the US, UK and Germany? I believe that trademarks go from country to country and that if you haven't registered the TM in the relevant countries, you won't be able to do anything about it as they used it before you (in the relevant countries).

SevanB2

10+ Year Member



 
Msg#: 1811 posted 3:54 am on Mar 12, 2004 (gmt 0)

No, I only have Trademark in the US.

walkman



 
Msg#: 1811 posted 3:58 am on Mar 12, 2004 (gmt 0)

nothing you can do I'm afraid. US trademarks are valid only here. IBM can take ibm.co.uk because they do business there, and have it trademarked in probbaly all countries. Not to mention tons of money. Is you name generic or...?

elgumbo

10+ Year Member



 
Msg#: 1811 posted 11:10 am on Mar 26, 2004 (gmt 0)

I know about ICANN domain dispute policy, but do they have any authority over .co.uk and .de domains and does a US Trademark owner have the rights to those?

Not sure if you've already got this sorted, but nominet.org.uk run the domain name dispute service in the UK.

jacuzzi

10+ Year Member



 
Msg#: 1811 posted 1:56 pm on Mar 26, 2004 (gmt 0)

Nominet's Dispute Resolution Policy is ideal for this. Nominet controls all .uk names. If you complain via DRS Nominet will contact the person, if they fail to transfer the name you can request an independent expert look at it. This costs 750 and should the expert rule in your favour Nominet will immediately transfer the name. Having a UK TM isn't a prerequisite for a favourable ruling, the basic test seems to be would the registrant have registered the name had your business not existed if not then you are likely to be successful.

[nominet.net...]

CHC

10+ Year Member



 
Msg#: 1811 posted 5:29 pm on Apr 18, 2004 (gmt 0)

Many American companies labor under the amusing misapprehension that simply by owning the .com version of a domain and a US trademark they can bully registrants into handing over the .co.uk versions of their domain names.

Nominet's excellent Dispute Resolution Service (DRS) does not recognise trademarks for the purposes of deciding UK intellectual property rights unless they are UK or European community wide registrations.

The more bullying and bombastic the reverse cyberjacker's attorney's letters, the higher the price that is likely to be demanded after they have initiated, and lost, the DRS case.

Many companies seeking to acquire domains foolishly heed the advice of greedy attorneys and go down the sledgehammer route. Sometimes a polite letter offering a reasonable sum of money to acquire a domain is by far the easiest, quickest and cheapest way to resolve the situation. Everyone wins, apart from the shysters!

figment88

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 1811 posted 6:01 pm on Apr 18, 2004 (gmt 0)

I am hardly an expert here, but AFAIK to get international protection for trademarks filed in a single country you need to register them under the Madrid System
[wipo.int...]

This gains you protection in the sixty-something signatory countries. I do not know how far the protection extends.

TinkyWinky

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 1811 posted 12:19 pm on Apr 19, 2004 (gmt 0)

SevanB2 - in my experience get a lawyer to send a terse letter underlining the "passing off" of his company as yours.

If you get a good lawyer to write this it shouldn't be more than about 200 ($350) cost provided they are not in London or similar large city! Within 14 days you'll probably know his intentions. I have done this on three occassions and on all have had information taken down and not put back up.

Getting the domain back may prove more difficult but at least they won't be passing off anymore!

Global Options:
 top home search open messages active posts  
 

Home / Forums Index / WebmasterWorld / Domain Names
rss feed

All trademarks and copyrights held by respective owners. Member comments are owned by the poster.
Home ¦ Free Tools ¦ Terms of Service ¦ Privacy Policy ¦ Report Problem ¦ About ¦ Library ¦ Newsletter
WebmasterWorld is a Developer Shed Community owned by Jim Boykin.
© Webmaster World 1996-2014 all rights reserved