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Trademark laws on internet

Labeled as discuss in Legal Discussion, started by MASebastian, Oct 21, 2020

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  1. MASebastian

    MASebastian Established Member

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    Hello!

    I am a lawyer and I started this as a hobby because it is an interesting thing to do (ref domain trading). I read a few posts here about the trademarks and I am curious (and probably in the near future I will start reading more on intelectual property law) about some things.

    Based on your experience and on your opinions:

    1. What are the main laws that apply to internet domain trademarks?

    As you can see, there may be in India a company that registered a trademark for them, lets say for the company name as XZVF Company.

    Is the company entitled to own X Z V F /// C O M domain name ? If yes, why ? The internet is a global place and I belive that registering a trademark in a specific country should apply only to marks in that country and to almost anything excepting the internet (www).

    Why should be a company registered in India entitled to own an internet domain with the trademarked name ?

    2. Which laws apply if the there are more persons involved?

    The company is located in India, the domain name is owned by a German persons which has a website hosted in Spain. Lets make it complicated and say that the domain is owned by two persons (as a lawyer I belive that buyers can make an aggrement that even only one registered the domain, they agree that they are both owners) a German and a French. Which law of intelectual property applies? The Indian, German or Spanish ? Why would one apply and the other one does not ?

    3. How we deal in case of different reglementation in national laws?

    India legislation might say that if you trademark your company name you are entitled to have the internet domain. German legislation might say that trademarking your company name does not entitle you to own a internet domain with the same name.

    4. How we deal with the exact name of two companies that are registered in different countries?

    We have J J K L company in India and we also have J J K L company registered in Germany. Who is entitled to own the internet domain and why ?

    5. Do we ever talk about entitled or only about you could have it regarding a domain name.

    6. I see that most of people look for trademarks in the US ? Why would US legislation be more important than others ?
     
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  2. karmaco

    karmaco Top Contributor VIP

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  3. MASebastian

    MASebastian Established Member

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    Let s imply court cases.
     
  4. Kuffy

    Kuffy Name Stag VIP

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    My understanding is that the use of the name is the main factor. If you are attempting to pass yourself off as the company, then that is n offence. If you are using the name to harvest traffic, then you may be liable for damages - the Tesco banking case is an example. If the company owned the name, and allowed it to drop, then that is an indication of a lack of interest in the name - Vernons.com is an example.

    As a personal example, I owned Sonyvideo.com for few years without any problems. I included a legal notice that I was not associated with Sony,and that I recognised their trademark. I also posted several times in various forums, that I was prepared to transfer the name to Sony if they requested it. I also included 3 links to various Sony video sites in a prominent position on the index page, and I didn't attempt to sell any video related products anywhere on the site. I did pick up a bit of income from some unrelated links though. It seems that the use of a site that conatins a trademark in the name is the most important factor.
     
  5. Kpett

    Kpett Top Contributor VIP

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    Another point is when the trademark was registered. If I owned the domain X Z V F /// com since 2001 and the XZFV company registered a trademark for that name after 2001, then the company would not be "entitled" to the domain name. However, that might not stop them from starting a UDRP and trying to get the name ... or filing a lawsuit, like Nissan did, even though the Nissan domain name (registered by Uzi Nissan) was registered before the Nissan car company (formerly called Datsun) started using the word Nissan for their cars.
     
  6. karmaco

    karmaco Top Contributor VIP

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    Each case and situation is different and we are not lawyers here except for @jberryhill.
    The main thing we need to do as domainers is not to infringe on existing trademarks.

    For example, super valuable dictionary words with multiple existing trademarks often have no landing page at all. A page with ads that you can’t control can throw up ads that infringe on the mark. So as a general rule, avoid landing pages with ads for TM domains.

    Never contact trademark owners. If they want it they come to you. You don’t want to do anything that bolsters a case against you at all. You will see pages that say may be for sale or contact us but no indication if it is for sale or not. An abundance of caution is a good thing.

    You asked a ton of questions that are only truly answerable by knowing trademark law and proceedings. But these are a few any new domainer should know.
     

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