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  1. #1
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    Question Trademark ownership of all TLD's: true or not?

    Hello guys,

    We are thinking of starting a business in local (country) advertising (buy and sell). We will start small (just starting with the purchase of some tld's eg. .com, .co.uk, .de, .fr., .nl) with a few websites, but the goal is to have our business running in all european countries.
    However we don't have the budget to buy all european domain extensions at once. If after a few years it seems to be going well and we want to buy them then, do we have the right of ownership (even in case a competitor bougth them first just to sell them at the highest price)? Is there an implicit ownership of all other tld's, based on trademark or intellectual ownership?

    Thx for your ideas...

  2. #2
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    You will have to register your trademark in each planned country and this is much more expensive, than buying domain only.

    Anyhow, you may always have to consider confilcts with local enterprises, who for any reason have been first in using the name planned by you, even, if not directly trademarking them. I remember the most (in)famous in Poland was Initel v. Intel. Finally Initel had to change business name but Intel had to pay some compensation.

    My advice is to buy domain and grow business.

    Good luck :-)
    Basia

  3. #3
    SitePoint Wizard TheRedDevil's Avatar
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    Unless you register your trademark in every country the short answer is no.

    You also need to remember, that in some countries you need to have established a company to be able to register a domain.

    Though you would be better off speaking with someone who works with trademark laws on a daily basic.

  4. #4
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    You don't give enough information to give you a correct answer (where are you based, where the trademark is registered etc.)

    First of all, there are some limitations to what you can purchase anyway.
    You can't buy an .fr without being in france
    You can't buy an .it without being in the EEC
    ...
    (sometimes these limitatios are just formal, sometimes they are strongly enforced)

    This also means that you can't have domains domains reassigned if you don't qualify to have one in the first place.

    For example, in Italy, filemaker.it was NOT reassigned to Filemaker Inc. because Filemaker Inc. was not in the EEC (I think Filemaker Inc had to buy the domain from the original owner)

    Moreover, if a domain was registered BEFORE your mark, there is no way you can heve it reassigned.

    Also, even if all the conditions above were satisfied there are many situations where you can use a trademarked domain and not have it reassigned to the trademark owner....

  5. #5
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    Well, if going http://www.europeregistry.com/domain...ins-search.htm I don't see any restrictions of where one is based and what domain one wants to register.

    My situation is something like this:
    We want to start of with a buy/sell website in a few coutries, eg:
    www.buy-sell-cars.com
    www.buy-sell-cars.co.uk
    www.buy-sell-cars.de

    (buy-sell-cars is not a registered trademark)
    When later it seems to be going well, we also want to start the business in other european countries; however, at that point it may appear that a competitor has registered .fr, .it (whatever) in the mainwhile.
    Can we then claim those domains back from him? (even if it has to go by court?)

  6. #6
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    Can we then claim those domains back from him?
    Generally speaking, no.
    My suggestion is to invest the abt. 100 euros more and get all the one you might be interested!

  7. #7
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    oh, looking at the prices in the lin you sent I can understand your worries.

    Well, you'll have to shop a bit around..

    For example, this is were I buy my .it domains:
    http://www.websolutions.it/prezzi.asp?language=en
    7 Euros instead of 39 .....

  8. #8
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    And in case one day we take someone to court (eg. www.buy-sell-cars.es), will it be easy to get a domain back or not? Any experiences?

  9. #9
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    Claudia, again you are not giving enough information to answer correctly.
    What country are you based in?
    What country you will register the mark in?
    ....

    Anyway, provided you have a valid registered mark for the country, generally national policies mimic the ICANN UDRP policy, with differences you should study from case to case.

    As an example, read this FAQ (petrains to ICANN but will be very similar for other counrtries too)
    http://www.keytlaw.com/urls/udrp.htm
    particularly point 11

    the key part is "A complainant must prove each of the following elements..."

    An extreme example,

    - you register the trade mark "buy-sell-cars" at an EEC level, so the mark is covered in in Italy too
    - after this, I register the domain www.buy-sell-cars.it, and use it to buy and sell cars

    check the three points utlined in the FAQ

    1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
    ok, here you are right

    2) The domain name owner does not have any rights or legitimate interests in respect of the domain name;
    NOT OK, I have a legitimate interest in the domain, I am using it legitimately

    3) The domain name owner registered the domain name and is using it in "bad faith."
    NOT OK, I am in good faith using the domain (I did'nt register it JUST to abuse your makr)

    You only satisfy 1 point out of three, so you will NEVER get the domain back, EVEN THOUGH YOU HAD A REGISTERD MARK VALID FOR ITALY, that would anyway cost you a LOT more than the domain.

    believe me, registering all the domains you might be interested in is the easiest way to go!

  10. #10
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    okidoki, I'll try to find some sponsors first


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