Domain Name Transfer Law
domain names
My father runs a local company which sells various brands & types of a
particular class of equipment. He sells the units all over the world so
he has a .com web address, which he has had since 1999, but
interestingly whois.networksolutions.com reports the ownership record as
having been created only since 2002.
My father and his company have been served with an injunction from
selling or disposing of his .com domain name, together with a demand for
transfer of the domain name.
The domain involved is generic name for the type of product being sold.
I'd like to specify the exact domain names involved, and I will if I'm
able, but as we’re already under legal attack I first want to ensure I’m
not doing anything wrong by talking about it publicly.
The plaintiff is a UK company with the same company name as the domain
and their website is the same domain but under the .co.uk suffix. They
have had their web address registered since 1997. The UK company does do
not sell the equipment. They sell a service which uses the equipment.
The second plaintiff is a kiwi company, a (much larger) competitor of my
father who, as far as I can see, don't seem to have any legitimate
claim to usurp the domain name. Neither their company name nor any of
their branded products include the domain name in their branding.
Originally the claim was one of trademark infringement, but when we
pointed out that the neither UK nor NZ trademarks have been registered,
(indeed the UK trademark law specifically prohibits the domain name from
being trademarked as it is generic) that claim was dropped. Now the
claim has been amended to being “passing off” and misleading conduct
under Section 9 of the Fair Trading Act.
We have already employed (expensive) legal representation, but my
question for the newsgroup is – can anyone point me to relevant case law
or informed opinion with which we can read to bring ourselves up to
speed on the issues involved.
TIA
Rob
an example how generic it is. You could check out the other cases that
were taken to the domain court, or whatever it is called. The NZ govt
took somone to it, for newzealand.com and lost, and ended up paying 1
million US for it.
On Wed, 18 Jun 2003 12:26:25 +1200, domain names <n...@spam.thanks>
wrote:
Enkidu
wrote:
>
>And, if needs to be pointed out that .com addresses are USA addresses -
>not international addresses.
>
Rubbish! Anyone can use one.
Cheers,
Cliff
--
Signed and sealed with Great Seal of the Executive
Council of the Internet, by The Master of The Net.
Peter Murray
"Enkidu" <enk...@cliffp.com> wrote in message
news:u2h0fvo7ecm8r137m...@4ax.com...
> On Wed, 18 Jun 2003 20:38:40 +1200, Lennier <nos...@nospam.invalid>
> wrote:
> >
> >And, if needs to be pointed out that .com addresses are USA addresses -
> >not international addresses.
> >
> Rubbish! Anyone can use one.
>
TLD (top level domain) being international. USA has their own TLD = .us
Other international TLDs include .biz, .info, .org, .net, etc.
--
Peter Murray
open i
http://www.blenheim.co.nz/open_i
Stuart Feigin
> wrote:
> >
> >And, if needs to be pointed out that .com addresses are USA addresses -
> >not international addresses.
> >
> Rubbish! Anyone can use one.
>
The only top level domains that are truly restricted are .gov (US
Government) and .mil (US military). Several others are restricted by their
registrars to users that fit the domain description, but not by country.
There are few users of the .us domain because the undifferentiated domains
are considered to have more status (like a phone number ending in a lot of
zeroes.) I actually own a .us domain for some of my mail.
If anyone complains about preferential treatment for the US, please remember
that the US government, (and for the first 15 years or so, the US military)
sponsored all the early development. At the time no one expected the thing
to become international. Looking up the ICANN stuff did bring back
memories. I used to work there (its actually a branch of the University of
Southern California). The whole system has become disjointed and
contentious since Jon Postel died.
Tim Hogard
: Hello everyone,
:
: My father and his company have been served with an injunction from
: transfer of the domain name.
That make a huge difference.
Domains in .com are on shaky legal grounds. .com is owned by
the US commerce department and/or the US NSF and both of them
have agreed to a resulution dispute policy. In theory they
(or NSI) could undo or ignore any legal request that isn't
from a US judge but thats not going to help you.
I would provide more info, but I'm not going to in a public.
Providing a real email address might let someone else
send you the right info to save your domain.
: The domain involved is generic name for the type of product being sold.
: I'd like to specify the exact domain names involved, and I will if I'm
: able, but as we’re already under legal attack I first want to ensure I’m
: not doing anything wrong by talking about it publicly.
There is nothing wrong, your atty won't like it though.
The generic name can be an issue. Aspirin.com or Kleenex.com
would be considered generic by many people today but courts
could take it either way. A US court would rule Kleenex as not
generic but they might rule Aspirin as generic. It seems that
the Kiwi courts seem to consider US case history for Trademark
disputes.
: The plaintiff is a UK company with the same company name as the domain
: and their website is the same domain but under the .co.uk suffix. They
: have had their web address registered since 1997. The UK company does do
: not sell the equipment. They sell a service which uses the equipment.
Do they have a registerd trademark in the US, UK or NZ?
: The second plaintiff is a kiwi company, a (much larger) competitor of my
: father who, as far as I can see, don't seem to have any legitimate
: claim to usurp the domain name. Neither their company name nor any of
: their branded products include the domain name in their branding.
That sounds liek cybersquatting.
Once again, do they have a registerd trademark in the US, UK or NZ?
: Originally the claim was one of trademark infringement, but when we
: pointed out that the neither UK nor NZ trademarks have been registered,
: (indeed the UK trademark law specifically prohibits the domain name from
: being trademarked as it is generic) that claim was dropped. Now the
: claim has been amended to being “passing off” and misleading conduct
: under Section 9 of the Fair Trading Act.
Not knowing anymore, I would try to seperate the two plaintiffs.
If this is a NZ court, then it would make sense to do that.
That will make one of the two give up since they both can't win
and when you lose, they pay. It also means you can get one
side to pay the legal expense of the other.
: We have already employed (expensive) legal representation, but my
: question for the newsgroup is – can anyone point me to relevant case law
: or informed opinion with which we can read to bring ourselves up to
: speed on the issues involved.
comp.protocols.tcp-ip.domains
cover the legals from time to time.
Basicly if no one has a trademark, (registerd or not), then most
courts have rulled in favor of the 1st holder of the domain
unless some cybersquatting can be proven.
How long its been online won't matter as much as how long the business
has been there.
Mark Harris
wrote:
>On Thu, 19 Jun 2003 00:13:55 +1200, Peter Murray wrote:
>
>> True, just because most .com addresses are USA registered does stop the
>> .com TLD (top level domain) being international. USA has their own TLD =
>> .us
>
>True, but I personally have never seen a website that used .us as it's
>tld.
>
You obviously don't get out much.
Almost all State government sites are in the .us space.
cheers
mark
--
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