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Domain Name Cease and Desist Trademark

Discussion in 'Copyright, Trademark, Patent Law' started by randygilchrist, Dec 3, 2008.

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  1. randygilchrist

    randygilchrist Law Topic Starter New Member

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    My jurisdiction is: California, USA

    Hello:

    I have a registered USA trademark on my product that I sell on the internet. I have also owned my domain name for my site since 2/06. Now, I've found that someone has registered a domain name afterwards this is very similar to mine, which seems like a trademark infringment. I want to get this similar domain name as well and I'm worried that if I don't I will inadvertantly send some of my visitors to this other site.

    I checked "Who Is" for this domain name and it shows that the owner registered this similar domain in 2/08 (a full 2 years after mine), but lives in Zimbabwe. What are my options and chances of wrestling this domain name from this trademark violator? Do I need to hire an internet attorney to do some kind of an international cease and desist order (if that's possible)? Do I need to first register my trademark with an International Trademark company (if so, which one?). Can I realistically make someone relinquish a domain name who lives in Zimbabwe? If so, what are my options and what are the steps? Thanks.
     
  2. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    This is a major challenge - and a reason why trademark owners are furious at ICANN for their desire to make more money by tossing up dozens of new TLD (top level domains.) It can cause all sorts of havoc, especially dealing with countries that are impossible to manage easily, e.g. Zimbabwe, Tunisia, etc. as opposed to EC countries like the UK, France, etc. International situations are always challenging.

    1) Is there a likelihood of confusion of what you have on your site with theirs? Do they do business in the US?

    2) Is there proof of a bad faith registration? Unfortunately the process is still not quite fair and can be expensive. Check out WIPo_Org and you will be able to read about the process of arbitration. Cost alone is about $3,500-5,000 between filing fees and your time, cost, etc. Hire a law firm and it could be a bit more.

    Fortunately I am one of the successful prosecutors of domain name infringement. :) Without more, it's challenging to tell and best of luck to you. Let us know if you need more assistance.
     
  3. mewcreations

    mewcreations New Member

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    I was contacted by mary kay corporation regarding a domain name I purchased called marykayopportunity. They want me to register the domain over to them. I'm not sure what to do.
     
  4. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    Next time you may want to start a new thread, although this is a related topic. Why did you purchase this domain name? I don't know if they will prosecute you since it is costly. If you've done nothing with the name, then chances are they cannot take it away from you. Once you do something with it, e.g. put up a web site, you may have a problem.

    Essentially Mary Kay Corporation has a trademark on their product line. If you're using the domain in a manner that will conflict or tarnish their trademark, you will not have much choice. If your name is Mary Kay or if you have a company called "Mary Kay Headhunting" which is in a completely different field than the cosmetics company, then it is possible you may have a valid usage. But the real question to ask yourself is the practicality of the situation - is it worth a fight?
     

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