TM domain in .US used in Germany...violation?

[Mike]

**Disclaimer: This may just be the most useless/dumb question on NP to date. So, if that's the case, I gladly accept the DQOFTM - Dumb Question of the Month award**

Here's something that crossed my mind just now. To the best of my knowledge patents are tied to the country in which they are filed, i would assume that the same or relatively similar legal procedure would apply to Trademarks and Wordmarks? Given that this statement is correct, how does a situation play out where a corporate entity owns a TM for a product in the USA ONLY while a Domain that is clearly to be confused with their TM is registered by a foreign national, hosted off shore, with content in a foreign language.
Which would be the reason for a legally enforceable action plan? The domain name? The extension of the domain name? Any combination thereof? The content - even though it's in a different language? Or is the company without a chance since they do not have a registered mark in the country of question?
Unfortunately, i don't have a realistic example, so i'm simply making one up:

Company: XYZ
Product: Wash machine
TM: Wash machine registered in the USA
Domain: Wash machine .com and .de
Who is: a foreign national
Hosting info: offshore
Content on the site: Conflicting with the TM BUT in a foreign language targeting clients in the owners geographic region.

What chances does the company that owns the TM have?

Again, i emphasize; this is strictly hypothetical and i have no interest in capitalizing on this, i'm simply just wondering what overrules certain facts.

 

[DNQuest.com]

If challenged in UDRP, there are 3 items of criteria

1- name similar or confusingly similar to the TM

2- -Does the owner have rights to the domain

3- was the domain registered and/or used in bad faith

Notice nothing about location mentioned. Though trademark law is referenced, UDRPs are not TM cases. So if the TM holder can prove all 3 items, they will be succesful.

 

[Mike]

If challenged in UDRP, there are 3 items of criteria

1- name similar or confusingly similar to the TM

2- -Does the owner have rights to the domain

3- was the domain registered and/or used in bad faith

Notice nothing about location mentioned. Though trademark law is referenced, UDRPs are not TM cases. So if the TM holder can prove all 3 items, they will be succesful.

In short: With the help of global UDRPs - TMs have global validity, correct?

 

[DNQuest.com]

Nope, read it again.

 

[Mike]

Don't get me wrong, i absolutely understand your response, however, it appears that i'm conceptually missing a piece to the puzzle.
As you said, no locations mentioned. Thus, the question, how does TM law in regards to domains apply internationally?
If someone registers a .com with a European registrar, hosts the domain through a foreign host and posts content in a different language, wouldn't local/national TM laws of the owners country of residence and hosting overrule U.S TM registrations/laws?

 

[DNQuest.com]

UDRP in under WIPO which is not a US agency. UDRPs do not give international TM rights, but gives a TM holder relief against TM infringement regardless where it occurs. Remember, the TM holder must prove all 3 elements. Likewise, the domain holder needs to show at least one or more of the elements do not apply.

Yes, I do agree that TM holder do overreach, I also see it is a problem where TM holder think they should be granted domain automatically. This is why i always say develop the domain and create interest in the domain.

 

[Mike]

Thanks! Very helpful. Rep'd.

 

[Krossat]

confused

Your posts got me a little confused here....

If WIPO is not a Us agency and they take into consideration TM violations filed by TM'ed companies; my question is whether only US TM's are applicable or any International TM's / Copyrights are valid?

I mean if there is an Australian company with a certain TM / Copyright (Australian TM), can they file for an infringement case with URDP???

Any Non US TM'ed / Copyright company can file for infringement in 'com???

 

[ji]

I thought of a similar thing today: I was whois'ing a domain I was after but someone got it before me. It is a .us . However the whois info says UK. Don't you have to be a US citizen? It's not a TM or anything like that.

 

[DNQuest.com]

To clear it up. Tms are used to show rights to a a name. They can be registered marks (An official TM registration given by a country) or common law marks which the alleged TM holder must prove they are afford protection under a common law TM. Where people get confused is UDRPs are not TM hearings, but domain name hearings. And teh firstelement of the domain hearing is "the domain similar or confusingly similiar to the TM". The complainant must prove they have rights to a name. Using a trademark is the easiets way to show rights to a domain. If it is registered, the complainant and show the registration of a government agency stating it is indeed a reigstered mark. If the complainant does not ahve a registered mark, then they have to prove they have a TM. This is where they give proof of usage, timeframe and any other related materials showing they do have a vested interest in the name. On the filp side, the respondant tries to show they should not be granted TM protection for one reason or the other. They must also show they may have rights to the domain name (IE- usage and creating interest).

You will see where a panelist will say "for the purpose of these proceeding, so-and-so is concidered teh TM of comapny A". This means the compalinant poved they should be afforded protection. This has nothing to do with where anyone resides or where the domain is. REmember, a complainant must prove all 3 elementws to be succesful in obtaining a domain. This is only the first one. To be honest, panelist uses their own beliefs in deciding, at least for the purpose of the proceeding, to grant a TM or not. It is easy to complainants to show they have rights.

 

[bluesman]

The tidy-sounding "global TM" concept would seem to make sense, as far as English language and even many Latin-based language countries are concerned. But what about in the future, when more and more non-Americans and non-Europeans, such as Asians will flood the domain marketplace with all their TM-related complaints? They may be proving they've fulfilled the criteria of the "Magic 3" for WIPO, but it'll be with TMs we never knew existed, from geographical and social areas we never conceived of, and in a language we'll never understand!