Legal Considerations For Domain Names

Someone registered a country specific of my domain

[Nick_W]

Hi all,

I've been asked to give an opinion on this scenario:

Guy in Finland has the euro licence to a franchise like business. He has the businessname.fi address.

He's just found out that someone he met once has registered businessname.dk

I don't even know where to start with advising him. Could someone point me in the right direction please?

Many thanks...

Nick

[Shakil]

Nick,

a very tricky scenario.

as they both will not be bound by ICANN rules (country specific).

The 1st step would be to look at the .dk rules to see if they co-operate with the Finland registry etc etc.

Also whether a European trademark applies in any case.

sorry but thats the best I can do, a bit out of my league.

Shak

[fathom]

Check trademarks (local & international).

If none, no problem... but whoever established the trademark first wins!

If the cash is available, register the trademark.

Note: laws are different in different countries, but an international trademarks are hard to beat.

[cornwall]

ICANN rules (country specific).

You sound as if you know about these things!

Does that mean that under ICANN rules the guy in Finland could have say www.businessname.com
And the one in Denmark say www.businessnames.com or indeed www.businessname.org

Even if one was registered long before the other, and they were both selling things/services available in both countries?

Deep subject

[Shakil]

from my understanding, ICANN/UDRP [icann.org]
only applies to TopLevel domains such as .com .net .org and a the new extensions.

Danish Rules [difo.dk] seem to be typical of country registries, and I am sure the Finland Registry [ficora.fi] has similar rules in place.

Shak

[fathom]

Trademarks [haynesboone.com]

RECENT DEVELOPMENTS IN TRADEMARK LAW:
What Every Business Should Know About Using Internet Trademarks

Not so recent (1999) but covers alot.

Updated Decemeber 2002 [inta.org]

[cornwall]

fathom

Thanks for those links, its certainly a deep subject, clearly designed to keep lawyers in clover for years.

I had not realised that links were such a complex subject vis a vis trade mark infringement

[fathom]

Not much of this really helps Nick_W -- quite vague still in Euro, but the court cases adds alot to your perspective.

[Nick_W]

Not much of this really helps Nick_W

Not so! ;)

Thanks guys, I've not been hired for this, just asked for a little advice and I've told the guy I'm no expert so the info given will be of great use.

Thanks again...

Nick

[robertito62]

fathom,

"...Check trademarks (local & international)..."

Where can we check? Is there one site? Thanks.

[fathom]

[trademarks.com...]

[inta.org...]

[Legalizer]

fathom had said "check trademarks (local & international).
If none, no problem... but whoever established the trademark first wins!"

While I agree checking trademarks in the .dk and .fi jurisdictions would be prudent, the first to establish a trademark is not necessarily the winner of anything. Trademarks can be held by many different entities who are in the same country with products or services that fit into different classes. An example would be a XZY mark for industrial machinery and an XZY mark for web development services. Also, a trademark or servicemark may not even be available if the goods or services are "merely descriptive," geographic or worse yet, "generic."

So lets say you search and find that the .dk guy has not registered or applied for a trademark in Denmark or the EU. He may still have a common law right to use the name.dk, (he could have a business that doesn't necessarily compete with the .fi guy) and the facts of each situation would dictate possible directions to take. If an "ICANN" like procedure were to be used, the guy in Finland would need to meet all the elements or requirements (e.g. bad faith use and registration of the domain name in the ICANN rules) to prevail in the dispute.

Happy new years.