How to shut down .co.uk and .de US Trademark Infringement

We own the .com verions and have Trademark

[SevanB2]

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]

[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]

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]

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]

No, I only have Trademark in the US.

[walkman]

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]

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]

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]

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]

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]

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!