Dominion.Domains

Domain trademarks in other countries.

Discussion in 'Legal Discussion' started by JamieHines, Jun 14, 2018 at 9:19 AM.

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  1. JamieHines

    JamieHines Upgraded Member Blue Account

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    So, I hand reg a domain name about three or four years ago. Can't remember right now, but It was just a random type in, a playoff of whisky. I typed in Whesskey and seen that the .com was available so I purchased it. A few months ago as I was deleting some of my crap names I decided to look-up Whesskey to see if there was an opportunity for me to sell it. I found a whisky company in Germany who was using the .de ext. and decided to give it a shot. Yes, I did a trademark search beforehand and came up clear. Maybe I missed something but I received an e-mail today after three months since contacting them. I received it in German, had to translate. My question is isn't trademarks only good in the country registered but not others which I thought made it okay to reg just as long as the trademark doesn't extend to your country? Hope I asked clearly. I'm thinking I should develop it just to piss them off. This is their response...


    Hello Mr. Hines,



    we are not interested in buying this domain address.



    Note that the name Whesskey® is trademarked.

    Any unauthorized use may require legal action.





    Best regards



    Holger Höhler

    Certified specialist in distilling

    Agricultural distiller



    Distillery Höhler

    Owner: Maren Küsel

    Kirchgasse 3

    65326 Aarbergen

    Tel. 06120/1321

    Mobile 0171 4633 147

    www.whesskey.de



    Watch our movie:



    The history of Whesskey's!
     
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  2. DrJacoby

    DrJacoby Established Member

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    I can't find any trademark either.
     
  3. DnEbook

    DnEbook DataGlasses.Com VIP ★★★★★★★★★★

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    Madrid protocol can be used for international trademark searches, if aware of a trademark it's a good idea of letting them come to you, of course trademarks have different classes but parking can be a no no if the landing pages have similar content to a trademarked name. Hope this helps.
     
  4. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    WHESSKEY

    (210)/(260)Application number 307000257
    (270)Application language de
    (220)Application date 2007-01-02
    Trade mark office Germany - DPMA
    (190)Registration office DE
    (111)Registration number 30700025
    (151)Registration date 2007-02-27
    (141)Expiry date 2027-01-31
    (550)Trade mark type Word
    (551)Kind of mark Individual
    (511)Nice classification 30,32,33
    Current trade mark status Registered
    Opposition period start date 2007-03-30
    Opposition period end date 2007-07-02

    [​IMG](510)List of goods and services[​IMG][​IMG]

    Classification version 9
    Classification kind Nice
    Mark standard character

    [​IMG]DE

    Nice class number 30
    List of goods and services Schokolade; Schokoladewaren, einschließlich Pralinen, insbesondere solche mit einer Füllung aus alkoholischen Getränken; Schokoladengetränke; Kaffeegetränke; Teegetränke; feine Backwaren und Konditorwaren; Speiseeis; Zuckerwaren
    Nice class number 32
    List of goods and services Mineralwässer und kohlensäurehaltige Wässer und andere alkoholfreie Getränke; Fruchtgetränke und Fruchtsäfte; Sirupe und andere Präparate für die Zubereitung von Getränken; Biere
    Nice class number 33
    List of goods and services alkoholische Getränke (ausgenommen Biere), einschließlich Spirituosen

    --------
    Did you think of just doing a Google search to see whether it was being used as a mark by anyone?

    By "a trademark search" one assumes you mean a search of the USPTO database which is not at all a "trademark search".

    But why assume that the company you found in GERMANY would primarily be interested in registering a mark in the United States in the first place?

    So, to be clear, if you do a Google search, you come up with pretty much nothing but references to them and their product. Apparently they make a brand of whiskey they call "whesskey", and have been doing so for quite some time, since whiskeybase.com produces the top Google results with entries going back at least as far as 2010, and this domain name was registered in 2014, while whesskey.de goes back as far as 2007 (consistent with their trademark filing).

    So, there are a couple of obvious facts here:

    1. They've been around since 2007.
    2. They produce a brand of whiskey called "WHESSKEY".
    3. They appear to be the only people using "WHESSKEY" for whiskey.

    It really depends on what you mean by "good". Trademarks don't come in a one-size-fits-all version of strength, distinctiveness, exclusivity, etc.. Continuing with the obvious facts here:

    4. Seven years after they launch their uniquely-named product, someone registers it in .com.
    5. After not doing much with the domain name, the registrant writes to them seeking to sell the domain name.

    If by "good", you mean "good enough for a UDRP", then the apparent facts are a classic and simple win for them.
     
    Last edited: Jun 15, 2018 at 2:42 AM
  5. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    And, don't get me wrong, only you can know what your intent was. But that's always true of any area of law in which intent is relevant. In the absence of mind reading machines, the way that "intent" is determined is by deciding what is most probable based on the external evidence.

    Here, regardless of what you intent might be, no one is going to believe this:

    And, again, please don't take this personally, but the idea that you can't quite remember why you bought the domain name in the first place, but then decided to have a look around four years after the fact to see if anyone was using it, is not a scenario that a UDRP panel is going to be believe is likely.

    You thought it was okay when you registered it? Or did you mean you thought it was okay when you decided to contact the trademark holder? Because, and this may just be the way you've written it, it sounds as if you were aware that they were the only people who appear to have been using it as a mark, but since they were in Germany you believed that "made it okay to reg".

    Did you think it was going to make them happy to hear from you, as if they would say, "Oh, look, some helpful person has registered our trademark as a .com and wants to sell it to us. What a splendid fellow he must be! This is a marvelous opportunity for us to spend money!"

    Most businesses aren't interested in accumulating domain names they don't want and don't need. There are hundreds of TLDs and thousands of possible variations on trademarks, and so the argument frequently believed here on namepros of "if they wanted it, they would have registered it" doesn't go very far. They might not want to register their mark as a domain name in every TLD, but what they certainly don't want is others using domain names which correspond to their mark in ways that might harm them. So what they have told you, rather politely as these things go, is that they don't want the .com, but they will certainly protect themselves if that domain name comes to be used in a way that puts you on their radar.

    I will remain fascinated by the widespread, persistent, and completely wrongheaded notion among domainers that running some search of the US Patent and Trademark database is the be-all and end-all of figuring out whether a trademark might be relevant to a domain name.

    If you do, for example, a Google image search and come up with a bunch of pictures that look like this:

    [​IMG]

    Then it is a pretty reliable sign that someone is using it as a trademark.

    Given that it is not otherwise a dictionary word, geographic location, or a term that lends itself to any immediately obvious non-infringing uses, then it is going to be very difficult to believe the sequence of "It popped into my head when I was registering domain names, and I decided to have a look around four years later to see if anyone was using it as a mark."

    So then, things take a turn for the worse. After writing to them and being informed that they aren't particularly bothered by an unused domain name, but would be concerned if it were to be used in some way, you say this:

    Because, yes, spending your time on an effort "just to piss them off" is a remarkably professional thing to do. They don't want to buy the domain name which was identical to their established mark at the time you registered it so, in your mind, the appropriate thing to do is to make them angry. Why? What does making other people angry do for you?

    So then, to add to the apparent facts thus far, adding this one to the stack:

    6. After being told they don't want to buy the domain name, but will enforce their rights if necessary, the registrant developed the domain name that had sat unused for four years, in a manner designed to "piss them off".

    Well, that would seal the very strong case against you here for sure.
     
    Last edited: Jun 15, 2018 at 12:29 PM
  6. NameDeck

    NameDeck Established Member

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    Drop the name and move on... nothing you can do really. I can't see anyone else buying it and the one possible enduser told you no. They're probably only interested in the German market so a .com holds no value at all.

    Developing would be a really bad idea. You put the domain on their radar and judging by their reply they will come for it once you start to infringe on their trademark.

    If you want to sell to european companies, know what you're doing. Depending on the country some value the ccTLD over a .com. Especially the smaller and midsized companies.
     
  7. Domainstore

    Domainstore Active Member VIP

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    Why on earth did you publish the domain it concerns about here publically for all to see ?
    Do know that Google catches up things that are written here on the forum, and "to piss them off" is of course not a nice thing to say.
    However I can understand your disappointment. Maybe you still had a chance, but by writing this down here in this forum, you nearly already lost from advance.
    I can understand your disappointment. From my point of view, I don't like the system of "Trademarks" whatsovever/alltogether ! First come first served is better. "Posessing a word", and others may not use it, is something that simply doesn't go into my mind. Even "posessing a word" is something that is impossible IMHO.
    Certainly for LL and LLL-domains (or better "words") => hundreds of abbreviations in several languages or meanings can have the same abbreviation. I find "posessing a word" is propostrous.
    And in case of a UDRP you could write that. (domainnames are only "leased" words in diferent extentions in an internetenvironment) This "VIEW/VISION OF MINE) goes legally to the very essence of "Trademarks" of course, It's declaring the system of "trademarks" as something illegal and in fact totally illogical (If the judge you will have ill take that into account is something else. But you could get luck by replying that. But don't take 3 judges of course. 1 judge is enough, because 1 judge may find the same thing I'm finding). But i have to admit in a UDRP that I encounterred I didn't use this argument, and yet won.

    What's in your advantage is that you didn't know about this company until now. And it's in another country.
    So malicious (financial gaining) intent can't be proven (certainly not 4 years ago), (except writing here a sentence "to piss them off").

    What I would suggest in this case is the following.
    They write that "any unauthorized use" may require legal action. ((note : but maybe authorized use if you ask, can not lead to legal action)).
    But you have this domainname already for 4 years and didn't know them. They waited a very long time to contact you, or even write to you, and only because you proposed this domainname to them.
    In any case : you can use the domainname, for "other content then their trademark dictates". That's for sure. I don't know what content was on your website in the past. (when they read it), so it's difficult what to say or advice a lot, without knowing that. (I can't see a website for the moment also, but that can be because of my PC or country..)

    Anyhow they say they "don't want to buy the secific dotcom-domainname."
    You could call them and ask if they aren't interested AT ALL in the dotcomname, even if it was for free ? If they answer "not interested", "but don't violate trademark" or "we're only intersted in the ".de" and you can use the .comdomain as you like, then you can keep the domainname and put something on it that doesn't violate their trademark (I mean the content of the trademark : what they sell, etc...), and you reply with saying that in the phone ! ('It's even possible that you can make a kinda whiskey, if they agree with that, because they only want the .de").
    (NOTE : What I want to say here is that IT IS possible that they don't care that somewhere else somebody has a kinda whisky with the same name. (but I don't think so)))

    But if they only say" "not interested" in .comname", but also "and in that case we begin a UDRP",because of "intellectual property", then you can reply in the phone that you didn't know about the trademark at all,when you registerred the domain and that they say that they're not interested in the dotcom, but only in the dot-.de, and you can say then "Look, I didn't know your company at all, I had several expenses buying and renewing the domain", "I had this and that plan with the domain" and you propose -in this case- an amount (considerable) LOWER then 1500 EURO for expenses, time spent, renewing,etc... (1500 Euro is the amount they have to pay to begin a UDRP, and if they win or if they loose, that stays the same : so if they start a UDRP and win, they cannot say that you have to pay their 1500 Euro back that they payed to start the UDRP),and if they loose certainly not).
    Let's say you agree on the phone for 500 Euros.
    If they say "no, we'll consider it as violation", you can start a website with another content then their Trademark-content or put "under construction " on the website, and without any advertising. You then write an email in what has been said in the phoneconversation, and what was agreed between you and them on the phone, and if they said "yes" to 500 Euros or so for works and expenses, you write that in an email and ask confirmation of the phonecall-agreement. And then you get 500Euros and give the domain to them.
    If they after that start a UDRP (in they say "yes" to 500 Euros) you can reply in the UDRP that you did a reasonable proposition to solve the problem, and they DID take it, and GOT THE DOMAINNAME.

    If they DIDN'T ACCEPT your proposition of 500 Euros for expenses etc... , (get that in writing, so after phone, send an email that you did this proposition to "get out of the problem between consenting adults) ), you can reply in the UDRP that the starting of the UDRP was unreasonable, as you came with a reasonable offer, and they didn't take that reasonable offer.

    There's stil a lot to say, but do know what you write down online and in emails.

    DO KNOW => UDRP's are published and readable online => Do read several of these UDRP's to learn what the judges usually do.
    (In case of UDRP : don't ask for a panel of more judges then 1, because that would cost you money (as far as I presume) or it can cost money to them alone, I don't know exactly.

    Be carefull, i would say, and to keep your name "CLEAN", try to avoid an UDRP, because it's also published online. And maybe with the strategy I wrote above this could succeed in a mutual agreement, without UDRP.

    I know that is difficult and hard to swallow...and I ALREADY ABOVE STATED THAT "TRADEMARKS ON WORDS" is something that I find ILLEGAL and even INHUMANE (it's certainly not 'heavenly').
    On earth....an international court should decide about that question, and even then it could be that I still don't agree with that international court.
    But in this world/on earth a lot of things that seem to many people as illegal, illogical, not right, or inhumane, do exist just for the sake of money (or other things......).
     
  8. Domainstore

    Domainstore Active Member VIP

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    @JamieHines @jberryhill
    Hello : Is the content of the above sentence something legal in UDRP's concerning domannames as defence against a UDRP to posessers/registrants of such "dictionary words, geografic locations, or a term that lends itself to any immediately obvious non-infringing uses" ???
    Can this be used as sufficient defence against a UDRP (and against what attack : nr 1 arguments, nr. 2 and nr. 3 that have to be combined). Under what of these three is it a defence, or is it a defence simply against a UDRP. like f.i. somebody's name is "Ronaldo", he has "Ronaldo.com", and another Ronaldo, who has "Ronaldo,pt" begins a UDRP against the first one.
    I mean of course (referring to the worldcup soccer) in Russia (Ronaldo from Brazil-starplayer soccer a decade and a half ago) of course and Ronaldo from Portugal (current startplayer).
    :xf.wink:
     
  9. NameDeck

    NameDeck Established Member

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    Worst advice ever.
     
  10. Domainstore

    Domainstore Active Member VIP

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    @JamieHines @jberryhill
    Maybe I shouldn't have suggested that I'm against lots of Trademarks if not all. But that is only an opinion I wrote down, and NOT my primary advice to begin about that against the complaining party. This view could be put down in a case of a UDRP, together with defending on the 3 points the other party has to proof. (but I would only do this if he would do the defence himself, not if he takes a lawyer to represent him. (In this case I would if they start a UDRP even immediately stop (you are warned first that a UDRP will be filed against you, and only 14 days later or so, the real UDRP-text of them officially is sent to the defending party).

    The real predominantly advice from me was " AVOID A UDRP " it's not wurth it, but to start negociating by PHONE for 500 Euro because he had expenses, and the other party knows that he must had expenses and also knows that a UDRP costs 1500 Euros. If phoneagreement is reached...AFTERWARDS writing the phoneagreement down in an EMAIL to them. The other way round (first write and then phone is not advisable).It could be they only want to give 250 Euros, or 750 Euros, what he will learn in the phone. But no negociating about price via email. Every word in an email could be used against you, certainly if bad language is used..

    => At least this is better then simply not trying anything at all and delete the domain, or let it expire.

    I do agree with the following you wrote => " If you want to sell to european companies, know what you're doing. Depending on the country some value the ccTLD over a .com. Especially the smaller and midsized companies." This is indeed partially true.

    Kind regards
     
    Last edited: Jun 17, 2018 at 1:57 PM
  11. Domainstore

    Domainstore Active Member VIP

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    Time elapsed to edit the previous post.

    I wanted to write also that in case of a UDRP, you get a warning with the full complaintarguments first from Switzerland, and 1 or 2 weeks later you get the same text and the official start of the UDRP has begun, and you have "X" time to react from then on.(you can ask for an extention for your reaction to the mediator if holiday is just begun (f.i. it's the day before Christmas, like I encounterred). Anyhow he can think about it when the warning comes, and my advice would be then to send to Switzerland (where the warning comes from), that he waves his right to the domainname, and the official UDRP doesn't have to be sent..
    It's simply not wurth the hassle for this domainname IMO.

    Kind regards
     
  12. JamieHines

    JamieHines Upgraded Member Blue Account

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    I've been away for a few days... including weekends. Who knew it was wrong to race a car 110mph on a clear stretch road at 2 am in garbage dump Los Angeles. My god, what happened to California? Anyways, thanks for the advice and belt to the bum. So, to be a little more clear. I reg the name not knowing there was a product with the name. I reg it because I liked the spelling, name and had disposable resources to do so. All of my domains are on auto-renew. I didn't look up the name and trademark until recently because I was dropping names and Whesskey was to be one of them. I figured I'll offer the .com to another non-.com owner because most domainers have done so, and believe it or not I didn't know there was a European trademark on it. The more I think about this, I do remember being contacted by someone around the time I bought it who offered $400 for the name. I said no because well, I liked it. Yup, I fell in love with it, but now I'm MGTOW. I took the Red Pill. I will either drop the name or just let it expire and move on. This domaining thug life can get crazy sometimes.
     
  13. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    I totally get that. The thing is, a UDRP panel would not believe you.
     

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