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DOMAIN NAME DISPUTES
Trademarks
We are not able to give advice on
trademark queries. If a domain name is available anyone can registering it. However it is possible that you may violate a
registered trademark if you attempt to use it.
Whether or not this is the case
depends on how generic the domain name is and how the courts apply the existing
trademark law. It would be difficult for any company to sue over a domain name
that uses a word from the dictionary, unless it is being used in such a way that
it could cause confusion with an existing trademark.
The global nature of the
Internet makes the issue even more difficult. e.g. Say their is a German mobile
phone manufacturer call DAPER and there is also a French milk producer called
DAPER. Who has the rights to DAPER.com? DAPER in South Africa, because they
bought it first.
DOMAINRAGE.COM
We have an
established policy on dealing successfully with domain name disputes. This page
will tell you what you can and cannot do and how we will react to your various
actions. This is not legal advice.
Current legal precedence has established that you CANNOT,
Take legal action against the internet / domain name provider
Take legal action against Nominet, CORE or Networks Solutions
Take legal action against our suppliers or our suppliers suppliers
The following actions available to you fall into 3 categories. We can however
only help you with any sites that prove to be abusive ,and is brought to our
attention, that are advertised physically on our site. We
are only trying to help you by explaining the various options and our advice
should at no stage substitute your need for legal representation. We do however
often receive formal threats from solicitors that misunderstand this new issue,
but there is not and has been no successful prosecutions against us. We do
however, see it as our duty to provide you with some basic guidelines that will
help you with your dispute.
1. Passing off - if you or your client feel that someone has registered a
name with the intention of passing off on your trading names or marks, your only
options is to take legal action against the owner of the domain name (not us).
We cannot help you and you will receive no response if you wrongfully threaten
us with legal action. It will only show us that you have misunderstood the issue
and that you are not acting in the best interest of your client. We advice
solicitors to take direct contact with the owner by email (usually info@domainname
or webmaster@domainname will work) or
other means first and try and establish if there is a real case or not. In most
cases the best action is to offer the owners a small sum to cover their expenses
to find another name and settle the case quickly. To prove a passing off case if
difficult and can be a long drawn exercise and we cannot help you at all until
you have a successful prosecution or injunction against the owner (not us). If
you go to court and win the domain name, we will offer you our services or to
remove the said name / site from auction. If you win a preliminary injunction
not allowing the owner the use of the domain name. We will temporarily
advertising the domain until the case is closed.
Taking legal action against DOMAINRAGE.COM is like taking legal action
against Companies House for listing a company name.
2. Trademark violation - If you own a Registered trademark in classes 35,
38 and 42 dated before the domain name was registered you stand a much better
chance of success. However we stress that the domain name must match the
trademark exactly and that all other cases will refer to passing off. In other
words your chances of success is almost impossible if for example you owned the
trademark IBM (ibm.com) and wanted to dispute the domain name ibn.com or
ibem.com. In any case you cannot involve us in the process, we are not the owner
or have any powers to transfer ownership of a domain name. If you wrongfully
involve us in the case we will already know that you have no experience in the
field and is not looking after the best interest of your client. Having a
trademark does not guarantee rights to a domain name and unless you have a clear
cut case like "burgerking.com" you are facing an uphill battle. The
One in a Million case is the legal precedence that established that you can
successfully win a case against an owner of a domain name, not an Internet
provider. Referring to this case while threatening us will at best show your
inexperience.
Your trademark must match the domain exactly
3. Abusive site on auction - this is where we can help. We do not allow our services
to be used for racial/sexual/political discrimination, pornography, harassment,
spam/junk mail among others. This does not mean that we will act just because
someone has put up a site that says certain things you do not like or
unsubstantiated passing off claims and unless we determine that the site is
outside what we allow we cannot help you. It has already been established that
we cannot be seen as publishers of the content, since we have no control over
what people put on their websites. You cannot take legal action for libel or
slander against an auction provider that does not actively monitor peoples
websites. An auction provider is not like a newspaper that can be found liable
for what employed journalists publish. We only accept notice of abusive sites by
recorded mail to our registered head office.
We do not allow pornography, junk mail, racial/sexual discrimination
Who can transfer a domain name
Only the owner or domain name database. We cannot cancel/delete a domain name
from the domain name databases. Only the databases like Nominet/CORE/NSI and the
legal owner has the physical powers to do this. We also have no powers to
transfer ownership. We cannot help. If you contact the databases directly they
will advice you the same as us, which is to take contact to the owner or take
legal action against the owner (not them or us).
Escrow Services
Using
our escrow services is one way to avoid the disappointment of loosing either
your domain name or cash. For a flat fee of £150 or 5% (which ever is the
greatest amount) we will ensure that you
have control of the domain before the seller is paid. Conversely we will make
sure that the buyer has paid up front before a transfer is initiated. The cost
is usually borne by the seller.
Domain name resolution services - our view
Using the various domain name resolution services might sound like a good idea.
However our experience tells us that this is a long and costly affair just like
taking the matter to court. The best approach is to contact the owner directly
and see if you can work out a solution directly. The human touch will always
remain and when you actually talk to someone directly things seems always to get
settled quicker. If you start out with threatening letters you might not reach
your goal as fast as if you try and negotiate a solution. If you still think
that you can take legal action against DOMAINRAGE.COM / Nominet / CORE / NSI you
have probably not learned anything from this document at all and we will respond
with the following reply.
THIS IS DOMAINRAGE.COMNET'S STANDARD DISPUTE RESPONSE
WITHOUT PREJUDICE
REPLY
TO
_______________
SENT VIA FAX
_______________
REF
_______________
TODAY'S DATE ________
LETTER DATED ________
Regret to inform you
that we are not the owners of the above mentioned domain name.
We have no technical
or electronic powers to transfer or cancel domain names that are owned by
clients. UK domains can only be transferred/cancelled by the owner or Nominet.
US domains can only be transferred/cancelled by the owner or CORE.
Under the Data
Protection Act 1984 and for privacy reasons we cannot disclose client data and
we cannot be deemed to appear obstructive on this matter. We will communicate to
our client a properly registered and certified UK trademark or a
trademark that assumes priority date under the Paris Convention. We refer all
other enquiries to our standard reply. To forward a trademark registration or
any other documents to the owner enclose the administration fee of 58.75 (gbp) pounds.
If a cheque for DOMAINRAGE is not enclosed your communication will be
ignored.
If you file a writ or an inter alia an interlocutory against
DOMAINRAGE instead of the owner of the domain name, you will be responsible for
considerable delays, since we will have to take legal advice and will require a
minimum of 60 days for each reply.
STANDARD REPLY TO DOMAIN NAME
DISPUTES
DOMAINRAGE.COM DOES NOT CENSOR, MONITOR OR
HAVE DIRECT CONTROL OVER DOMAIN NAMES
WHEN OUR CLIENT REGISTERED THIS DOMAIN NAME, THEY STATED THAT TO THEIR
KNOWLEDGE, THE DOMAIN NAME DOES NOT VIOLATE TRADEMARKS OR OTHER STATUTES. IF YOU
WANT TO DISPUTE THE OWNERSHIP OF THIS DOMAIN NAME, YOU SHOULD SEEK LEGAL ADVICE.
UNDER THE DATA PROTECTION ACT 1984 WE CANNOT DISCLOSE INFORMATION ABOUT OUR
CLIENTS WITHOUT BEING LEGALLY OBLIGED TO DO SO. UK DOMAIN NAMES HAVE NO
REGISTRANT ADDRESS LISTED IN THE NOMINET DATABASE. WE WILL DISCLOSE THE
REGISTRANT DETAILS IF A WRIT IS FILED WITH THE HIGH COURT AGAINST THE
REGISTRANT ON OUR ADDRESS. WE SUGGEST THAT YOU CONTACT THE REGISTRANT FIRST BY
SENDING SEVERAL EMAILS TO [email protected] AND TRY TO RESOLVE
YOUR DISPUTE WITHOUT NOMINET/LEGAL ACTION. DOMAINRAGE IS NOT PART OF THE DISPUTE
AND WE CANNOT HELP YOU IN ANY OTHER WAY. WE WILL THEREFORE NOT PARTICIPATE IN
ANY CORRESPONDENCE OTHER THAN THIS STANDARD REPLY, BUT WE WILL COMPLY WITH ANY
COURT RULING. REGISTRANT DETAILS FOR US DOMAINS IS PUBLIC INFORMATION AND CAN BE
LOOKED UP IN THE DATABASE.
Internet name provider can't be
sued
Court says Network Solutions not liable for squatters
Update: 8:41 PM ET Oct 25, 1999
SAN FRANCISCO (AP) -- A company that registers Internet
domain names can't be sued for approving the name of a "cybersquatter"
that violates another firm's trademark, a federal appeals court ruled Monday.
Network Solutions Inc. (NSOL: news, msgs), the principal
registrar of names ending in .com, doesn't control or monitor the millions of
names it approves and is not legally responsible when the approval results in a
trademark infringement, said the 9th U.S. Circuit Court of Appeals.
The ruling recognizes the need for speedy, high-volume
registrations of domain names, said Ronald L. Johnston, lawyer for Network
Solutions.
Unlike the government office that takes a year or more
to review and approve trademarks, "Network Solutions doesn't review the
names that people are trying to register," Johnston said. "This is
critical to the growth of the commercial Internet."
This is the latest of several recent rulings on
cybersquatters, who take advantage of first-come, first-served Internet domain
registration by claiming prominent names in hopes of getting companies to pay
large sums for them. The court, which oversees federal courts in California and
eight other Western states, has generally rejected major companies' claims of
broad legal rights to protect their trademarks.
Monday's case involved a suit by Lockheed Martin Corp.,
whose well-known Skunk Works laboratory in Palmdale designs aircraft for the
government. Network Solutions, one of several companies that register domain
names after screening for duplications, has registered a dozen names containing
some variation of "skunk works," a phrase previously trademarked by
Lockheed Martin.
Lockheed Martin, based in Bethesda, Md., sued Network
Solutions in 1996 after getting no response to its request to cancel the
registrations. The suit sought damages for trademark infringement and an order
barring all such domain names except Lockheed's.
U.S. District Judge Dean Pregerson of Los Angeles
dismissed the suit and was upheld by the appeals court in a 3-0 ruling.
Network Solutions exercises no more control over the
domain names it registers than the U.S. Postal Services provides when it sends
mail to a street address, said the opinion by Judge Stephen Trott. He said a
company accused of taking part in trademark infringement is responsible only if
it performed "direct control and monitoring" of the infringing action.
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