redface on 2/2/2010 at 18:53
An international (and well known) company, apparently from the US, claims to own my domain name (redworks.sk), which I registered years before they trademarked the word. They asked me to transfer it to them, as they've opened a local branch in my country (Slovakia, that's central Europe). Politely, but it's still a cease & desist. Their words: "Redworks is an international group belonging to Ogilvy and an international trademark we own gives us the rights to Redworks domains in all countries including yours."
Seems fishy to me, they might be just trying their luck before court threats/money offers, and I'm obviously going to ask them to prove their claims. I certainly don't plan to give up easily on the website and email address I've been using for most of my internet life.
So my question is - do they have the right to do this? What are my chances of keeping the domain or at least selling it for the right price?
Renzatic on 2/2/2010 at 19:16
Quote Posted by Redface
...which I registered years before they trademarked the word.
Then I'm fairly sure you're in the right, and there's no way they can just snatch the domain away from you. They might try to scare you with C&D tactics, accuse you of squatting, and possibly attempt to drag you through some unnecessary legal BS, but ultimately all they can do is take it before a judge, who will more than likely side on your behalf.
Chances are good they know they're not legally entitled to the domain, but they're trying scare tactics to see if you fold. Let them. That's all they can do.
SubJeff on 2/2/2010 at 20:39
Is this really the case internationally Renz? That if you had a domain before the name was trademarked you can keep it?
David on 2/2/2010 at 20:59
Domain names are all kinds of crazy.
Don't offer to sell it to them as I recall certain other cases where an offer by the domain owner to sell the domain has been used as proof that they don't need it / aren't using it. You might be able to accept an offer by them, though.
IANAL, so who the fuck knows.
Good luck
Renzatic on 2/2/2010 at 21:08
I can't say for a fact, but I'm fairly sure it's a safe assumption. If someone has had a name registered for x amount of years, and a corporation comes along sometime later and registers it themselves, then precedence lays with whoever filed first.
To me it seem fairly cut and dry.
Kolya on 2/2/2010 at 21:22
How does an international trademark give them the right to all domains of that name in all countries?
That is almost certainly bull. You might want to check with a lawyer which Slovakian and EU rights apply to this. In the meantime I would not answer them.
Oh but inform your host that you've been legally threatened in this way and do not wish that they give out any information about you or your contract. If it's a good host they might also be able to tell you more about how to proceed. Good luck.
redface on 2/2/2010 at 23:03
Thanks for the suggestions, guys. I've sent a reply asking for proof of legitimacy today, I'll keep you updated.
demagogue on 2/2/2010 at 23:11
A few things might make your case shaky. Slovakia is an EU member, so it probably would incorporate a Madrid-system int'l trademark into its national law (there is a treaty on it, anyway, the Madrid Agreement .... whether they've properly filed it is another question. Edit: double-checked, Slovakia is a member). And then: (1) First to file can get a priority date, a kind of presumption of priority right to use it commercially, even if other stuff pre-exists it. (2) You might have had a case if your prior use had been commercial, to establish a brand. But your use wasn't really commercial, so it doesn't help establish a prior right to use. Anyway, it's clear you're not going to win saying you have a prior right. What you'd argue is that your use of it *now* is fair game because it's still not commercial so there's no risk of confusion... But that might get into special rules for domain names and I don't know the answer to that. But the thing is they're a big company with lots of money to push you around if they wanted, and have guys getting paid $100K+ just to do things like research trademark law all day.
I really don't have an answer for what's the best thing you should do. If you want, kindly reply that "The use of my domain xxx.sk is strictly for personal use, not commercial, and in no way relates to your industry, so could never be confused with your esteemed brand. So legally there is no issue of my domain name interfering with your brand or trademark rights. I appreciate you making me aware of the issue and wish you the best of luck in establishing your brand under a slightly different domain name." Or take the money and run.
heywood on 3/2/2010 at 01:23
I think you'd want to consult a lawyer first before responding to them.
Also, try to find out from (
https://www.sk-nic.sk) https://www.sk-nic.sk whether the ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) applies to the .sk domain. It applies to all global domains and many country code domains as well. If it does, you're probably in luck because it means the plaintiff will have to go through the UDRP arbitration process first before a legal challenge, and the UDRP requires a finding of bad faith (i.e. intent to cybersquat). As David says, whatever you do, don't offer to sell it to them, because that will be used as evidence you registered it in bad faith.
EDIT: See this: (
http://www.icann.org/en/dndr/udrp/policy.htm) http://www.icann.org/en/dndr/udrp/policy.htm. Particularly parts 4a and 4b, which say:
Quote Posted by UDRP Policy
a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Vernon on 3/2/2010 at 04:26
A similar thing happened once during my employ at a small company. One of the television networks wanted our domain name and tried to strongarm it from the boss. They tried heavy stuff like this and even offered a substantial sum of money. My boss refused outright, then just ignored all further correspondence. I don't know if someone like this redworks outfit will back down so easily. The television network's startup failed after six months and my boss's business went under 9 months later. Oh, the irony! :bored:
If this happened to me here in Australia, the first people I'd call would be the Department of Fair Trading. Do you have a direct equivalent in Slovakia? Anyway, good luck lol
