Many nations have treaties and agreements that make some or all of a trademark apply to another country. There have also been several cases in which trademarks over the use of domains have crossed borders with decisions being upheld in both jurisdictions (i.e. the playboy case). Of course ultimately it’s much easier to sue when the person is next door, not a board ride away.
Yes, I’m aware of nation agreements, but it’s quite hard for smaller companies. Playboy, they make millions (billions?), same with Microsoft and Coca-Cola. Small companies that work nationally and use a .com (Although ideally they shouldn’t, but they do), the chances are very slim of it coming to anything.
If both parties are ‘innocent’, what can you do? Agree to disagree and leave it at that?
There’s a store near me called ‘Best Buy’. Obviously it’s not the Best Buy we all know. This little Best Buy only sells clothing, so it’s okay.
Ohh I see so many M$N groups illegally using trademarks it is sad. Disney is a major player in that area. Later in this thread it was said that Disney does not do it for jollies but that they have too. True enough but as with all it as to be reasonable. For instance as was the case in Berlin.
a) The hospital where my daughter was born handles kids of all ages and had had Disney characters painted on the walls to make it more friendly for the sick kids. Disney forced their removal. Was it wrong of them? Yes, but it is a childrens hospital and no profit was made, it was just for the kids so I hardly think any court would use it against them for not deffendig their trademark.
b) A elementary school in the district of Neukölln was named in Honor of Walt Disney. Not only did the Disney people not bother to send a representative to the re-naming ceremony, they sent instead a legal letter reminding them that they are not allowed to use any Disney Character in any way as mascot or anything. Obviously the TM lawyers hold more weight there then the Public Relations people.
A third example in general to the TM theme and domain names. A German by the name of Schumacher had a domain name with Schumacher in it takes away from him in a decision by a court in favor of the Formel1 driver Micheal Schumacher. I prominent person has more right to a family name the a blue collar worker of the same name, as I recall the fellows domain name was in fact older than M. Schumacher’s claim to fame, so it was not based on him using the name to try to make a profit or such of M. Schumachers name.
A company that I work with has come into a trademark issue. We are in the forestry industry and our name is our location and the word mill put together, then the word industry at the end.
When they started up there website, blahmill.com was taken with a guy trying to sell it after his company fell through (archive.org confirmed that it was a stamp company or something), blahmill.net is a company in france, that is apparantly an English Imersion for Adults school, blahmill.org just hangs but is owned by someone.
So they opted for the long name blahmillindustries.com it worked and it seemed to be a good choice. Well, after a couple of years they pissed of an ex supplier as they moved into competing with that supplier, the competitor then contacted the person at blahmill.com and paid something like 5 grand to buy the domain name. This made someone using our name, in the short from of our domain name, who has no right to it, and directly competes against us. We had an easy time legally getting the domain transfered to us, since that was clearly in bad faith. On the other hand the French school, we’d never be able to beat becuase they have a legitamate use of our name, are in a different industry, and anyone wolud clearly be able to tell the difference between us and them.
It’s really murkey waters, but if they aren’t competing against you, and they seemed to take the name by chance, and not in an attemt to screw you, you might have a hard time with this. The only sure way to protect a domain name is to spend the money to buy all the varients.
I just got this email from the people:
Dear XXXXX,
My name is XXXXX, and I am authorized to discuss matters concerning XXXXX,.com. Our attorney has assured us that we have every right to continue developing XXXXX,.com for use on the internet. Our application is unique, and in no way infringes on your own product.
With that in mind, I would like to let you know that we are reasonable and that everything is negotiable. However, if you truly wish to acquire XXXXX,.com, you will need to tender a very serious offer.
Upon reaching an agreement, you will be required to provide a contract which is acceptable to both parties. When and only when we have that contract signed by both parties, we will transfer the domain to your ownership.
Thank you for your interest, XXX XXX
Yes, since you are the owner of the trademark they cannot use it unless you let them or you don’t care about it what you could do is email them and tell them not to use it and if they want proof send them a letter and charge them for shipping.
Can I use a trademark lawyer in my local area to write a cease and desist letter? My original trademark lawyer was in another state.
About how much does it cost for a cease and desist letter? One lawyer quoted me $300.00!
I can’t believe these jerks want to sell me my own trademarked name!
Can I use a trademark lawyer in my local area to write a cease and desist letter? My original trademark lawyer was in another state.
Yes. You may also want him to bring up the dispute with ICANN.
About how much does it cost for a cease and desist letter? One lawyer quoted me $300.00!
No idea, it could be around there, which is about half the cost you paid to TM it I assume.
Lawyers around here charge technically over €150 an hour, but to be nice they usually charge €50 just to give advice figuring they will get the rest of the money when they act for you. So $300.- does not suprise me at all, they are not cheap and do nothing for free.
I know a really good UK based trademark lawyer. He was actually responsible for drafting the legislation here in the UK, and since then has set up his own practice! So he knows his stuff inside out! If you’d like me to give you his contact details just send me an email stevendanzigerAThotmail.com and I’ll put you in touch. It shouldn’t be a very difficult job - just an agressive lawyers letter from someone who knows their stuff should be enough to put these people off.
Steven
I once got a cease and desist notice several years ago, as a result I’ve despised the company and their owners ever since. A simple friendly (and non-threatening/patronising) email like was sent here would have sorted the situation immediately. So at least you tried. 
Out of interest, would the person involved here get away with it if he was in another country where the trademark wasn’t registered?
What is ICANN?
Did you see the email they sent me? They actually want me to purchase the domain name back! Is this called domain name hijacking?
The good ol’ boy dirty south method involves 2 large rednecks with big trucks & 12 guages… … I hear you can call a lawyer for this too.
I think they screwed themselves by offering to sell it and have shown that they have no legitimate interest in the name. Like ticksoft I hate lawyer’s letters, they go way the top and create problems and animosity.
If it was me I would tell them (nicely) that I will protect my trademark. “IF” their (as yet undeveloped) site does infringe my trademark I will take steps including action to acquire the name and to recover any revenue they made as a result of the infringement. This would include any Adsense, ad revenue or product sales. Remove any economic incentive to develop the site in violation of your trademark.
I guess so, domain hijacking basically means registering any expired domain name. If I owned the trademark and wanted the domain, I would offer to cover the registration and transfer costs of the domain. Seems the most fair thing to do.
However, my website is being re-designed, and many of the products are being produced. It’s not as if I am making revenue at this time.
So you’re not making revenue, and presumably not getting much traffic? Chances are this other site’s name is just coincidental.
But I still own the Trademark of the name.
So long as you have it registered and are using it in commerce (in any capacity, even if its just development) that’s all you need.