«

On Wed, 30 Jul 2003 18:52:23 +1200, markd <>
wrote:

>Hi,
>
>In the following scenario, will I lose my domain name?
>
>I have a domain name, for example, mydogs.co.nz, which I use to put up
>everything about my dogs, sort of like a dog weblog.
>
>Now there is this overseas company with a NZ trademark MyDogs, which
>sells dog food etc., and demands me to surrender the domain name
>mydogs.co.nz. I have never intended to make any profit out of this
>domain name, nor is it commercial in nature, will they still be able to
>take it away from me?
>
>Are there any good copyright/trademark lawyers in NZ I can contact?
>
>Thank in advance.
>
>Mark.


Been a lot of good answers here Mark, I'll just add my 2c.....

My observations of historical cases are that domain names are easily
claimed by the 'trademark' owner if it can be decided the existing
domain name owner is squatting & not legitimately interested in the
domain otherwise. If you're not squatting, and the name is a generic
phrase or word, such as "mydogs", then you should be able to keep your
domain so long as you put up a good fight.

In my view the last thing you want to do is offer to sell it to them
or talk money in any way. Doing so will make you look like a squatter.
Previous history of domain name spats shows the claimant, or their
lawyers at least, always first try to get the domain name owner to
talk sums. That then gives them evidence of squatting, because that's
what squatters do - sell their domain to highest offer.

Cheers

Gavin

Uncle StoatWarbler wrote:

> PDT also has well documented credentials as a lying, backstabbing deceitful
> bastard.


But of course Mr Brown, you dont...

(Gavin Tunney) wrote in
news::


> In my view the last thing you want to do is offer to sell it to them
> or talk money in any way. Doing so will make you look like a squatter.
> Previous history of domain name spats shows the claimant, or their
> lawyers at least, always first try to get the domain name owner to
> talk sums. That then gives them evidence of squatting, because that's
> what squatters do - sell their domain to highest offer.
>
> Cheers
>
> Gavin
>

So a better aproach might be to offer to work with them for a win/win
outcome, like get them to pay for a new website for "mydogs.co.nz" a link
to the new site from the company and compensation for the hassle involved.

--
Chris Mayhew using Xnews !

> He felt in this case as you are not competing with or degrading the name
> 'Mydogs' they would have next to no chance of having it taken off you.

The site itself is for personal use, and in no way similar to the said
company's current website. So it is unlikely my domain name/website can
pass off anything, nor can it mislead anybody. On the site, it does not
use any of the said trademark, the only "link" is the domain name. So it
will be interesting to find out if registering and using the domain name
constitutes the use of a trademark.

However I do have a sole-trading business which the said company claims,
is a potential competitor. That is why they are quoting FTA, Passing Off
and MTA as their grounds.



> There has been a large number of case of companies claiming domain names due
> to register trademarks in nz, almost all have failed to succeed.

Is it possible to get more information about the cases somewhere? I
would like to check out any precedence.


Mark.

On Fri, 01 Aug 2003 02:56:23 +0000, "Uncle StoatWarbler"
<alanb+> wrote:

>On Fri, 01 Aug 2003 06:53:23 +1200, DPF wrote:
>
>
>> Alan - while I agree the actions of those who supported the defamation
>> action against you were wrong (in my opinion) and highly regrettable, it
>> doesn't mean that this rules people out from any involvement in
>> InternetNZ.
>
>Someone who repeatedly lied to the membership about his involvement in the
>case AND appeared on TV3 as a "commentator" on the case when he'd been
>named in court as the INSTIGATOR has pretty much proven he cannot be
>trusted.
>
>He's out for his own glory. He lost his bid to stay on the council and
>managed to sneak in the back door because you are a bunch of spineless
>cowards.
>
>Or you're being paid to look the other way.
>
>Which is it?

Alan if you want to insult and abuse those who spent hundreds of hours
trying to stop the defamation action against you, for no reward or
return, that is your privilege.

DPF
--
Blog: http://www.kiwiblog.co.nz
E-mail:
ICQ: 29964527
MSN:

On Fri, 01 Aug 2003 20:21:37 +1200, markd wrote:

> However I do have a sole-trading business which the said company claims,
> is a potential competitor. That is why they are quoting FTA, Passing Off
> and MTA as their grounds.

the usual bullshit.

They're trying to play the game of "who has deeper pockets"

>> There has been a large number of case of companies claiming domain names due
>> to register trademarks in nz, almost all have failed to succeed.
>
> Is it possible to get more information about the cases somewhere? I
> would like to check out any precedence.

Few of the companies which have tried reverse domain name hijacking have
come up against someone opersting a company they can claim is a potential
competitor.

The first thing to do is stick to your guns and state the domain is not
for sale at any price. Secondly, contact a competent domain name lawyer
and be prepared to pay through the nose for it. Clendon Feeney would be a
good place to start, the guys there aren't trying to play political power
games.

AVOID any lawyer who's been involved in the ISOCNZ circus, they're there
for glory and politics.

On Fri, 01 Aug 2003 22:35:16 +1200, DPF wrote:

> Alan if you want to insult and abuse those who spent hundreds of hours
> trying to stop the defamation action against you, for no reward or
> return, that is your privilege.

It was action initiated and orchestrated by someone who lied about his
involvement and is still playing a core role in the society.

He should have been removed permanently, not sent off to rail publically
about ICANN being secretive and manipulative when he is guilty of
performing exactly the same things he screams about, within ISOCNZ until
exposed - and due to ongoing ISOCNZ secrecy may well still be doing it.

On Thu, 31 Jul 2003 23:13:02 +1200, "T.N.O" <> wrote:

ObDisclaimer: IANAL

>"Mark" wrote
>| Something like cocacola.co.nz or xerox.co.nz might be a
>| little tougher to hold on to..
>
>but who is to say that "mydogs" is not as good of a marketing name as "coke"
>or "xerox" all this is is personal opinion.
>
There is a subset of trademark law that deals with "famous marks" -
coke or coca-cola might fall under that, as they are much better known
than "mydogs". I believe "xerox" (like cellotape or jello) does not,
as they were not initially defended and so lost their "famous mark"
status and now cannot be counted as a trademark, except in
circumstances of someone passing themselves off as the original. Xerox
is now used a generic term for a photocopy.

IIRC there was a thread on this last year when Google started issuing
cease and desistage to all and sundry using their logo, and made
noises about not wanting "google" used as a verb, because they didn't
want their trademark to lapse through not defending it. IIRC also,
there was comment about this being standard practice to establish a
defence, but that they didn't intend to actually sue anyone.

cheers

mark
--
"Someone's been mean to you! Tell me who it is, so I can punch him tastefully."
- Ralph Bakshi's Mighty Mouse

ObDisclaimer: I am not a lawyer

On Fri, 1 Aug 2003 02:21:20 +1200, "The Flash"
<> wrote:
>> A similar, but more in-your-face example is domain names like
>> PayPalSucks.com, PayPalWarning.com, I wonder if they can get away with
>> using the trademarked wording?
>
>US Website, covered by freedom of speech act in the US. you would not be
>able to register 'fordsucks.co.nz'

You would be allowed to register it, but you might be buying a fight
with Ford. If so, they might go after you for defamation, although
it's debatable whether they'd win, on law, but their pockets would
undoubtedly be deeper.

There is nothing in the setup and management of the NZ DNS that would
prevent registration of a name like ford-sucks.co.nz, as the act of
registration indemnifies the Registry and you as nameholder bear
responsibility for any infringement under law. This *has* been tested
in the New Zealand courts - see
http://www.rbd-law.com/domain_names/...oggi-co-nz.htm
(I was on the ISOCNZ council at the time)

Also see http://www.harkness.co.nz/articles/domain_names.htm which
discusses the wider issues.

>as we do not allow this level of personal freedom.

You're right in that US law has explicit freedom of speech, and that
covers parody and criticism. (I'd debate whether that amounts to
greater personal freedom, but YMMV

There was a case recently where a guy set up such a domain and won.
See http://www.phillipsnizer.com/library...ib_case313.cfm

The Taubman Company v. Webfeats, et al., Nos. 01-2648/2725
(6th Cir., February 7, 2003). Reversing the court below,
the Sixth Circuit dissolves an injunction which enjoined
defendants from using plaintiff's trademarks in conjunction
with the word "sucks" in the domain name of several
"complaint" sites, as well as in the domain name of a
non-commercial "fan" site. The Sixth Circuit held that
defendants' use of plaintiff's mark in a 'fan' site
did not run afoul of Section 1114 of the Lanham Act
because of the presence of both a prominent disclaimer
on the site disavowing any affiliation with plaintiff,
and a link to plaintiff's official web site. Defendant's
use of plaintiff's marks in conjunction with the word
"sucks" in the domain names of non-commercial complaint
sites did not violate Section 1114 of the Lanham
Act because there was no likelihood of consumer confusion
arising therefrom, and because such speech is protected by
the First Amendment.

While US law does not automatically set precedent in NZ, the Courts
here are aware of decisions in other jurisdictions and do note them in
their arguments and judgements.

NZ does not have the blanket benefit of the US First Amendment,
guaranteeing free speech, but we do have a common law tradition of
free speech, as long as it does not cause public unrest. We have
fairly solid defamation laws, but truth is an absolute defence. If you
set up a site called ford-motors-porirua-sucks.co.nz, which detailed a
bad experience you had had with that company, odds are you'd get away
with it. If you just used it to rant about Ford cars in general, or
about the company in particular, I think the balance would swing the
company's way, as you could be seen as bringing the company into
unwarrented disrepute "in the minds of right-thinking people" (I am
*not* making this up!)

fordsucks.co.nz is even more open, I think. It could refer to a man
named ford, a stram crossing, a car or tractor or even a dog. The name
per se wouldn't be enough to attract a trademark case (IMHO) or a
defamation case.

Whew, that's a lot for a Saturday night. If in doubt, consult a
lawyer, but check your bank account first - IP lawyers do not come
cheap.

cheers

mark
--
"Someone's been mean to you! Tell me who it is, so I can punch him tastefully."
- Ralph Bakshi's Mighty Mouse

(Mark Harris) wrote in
news::

> On Thu, 31 Jul 2003 23:13:02 +1200, "T.N.O" <> wrote:
>
> ObDisclaimer: IANAL
>
>>"Mark" wrote
>>| Something like cocacola.co.nz or xerox.co.nz might be a
>>| little tougher to hold on to..
>>
>>but who is to say that "mydogs" is not as good of a marketing name as
>>"coke" or "xerox" all this is is personal opinion.
>>
> There is a subset of trademark law that deals with "famous marks" -
> coke or coca-cola might fall under that, as they are much better known
> than "mydogs". I believe "xerox" (like cellotape or jello) does not,
> as they were not initially defended and so lost their "famous mark"
> status and now cannot be counted as a trademark, except in
> circumstances of someone passing themselves off as the original. Xerox
> is now used a generic term for a photocopy.
>
I don't know what this "subset" is that you are refering to but there is a
difference between trademark names like "mydogs" and Xerox, Cellotape,
Google, Coca-Cola etc and that is that "mydogs" is made up of 1 or more
common english words unlike Xerox, Coca-Cola etc which are made up words
Which had no meaning when they were introduced. The fact that Xerox has
become a generic term is mostlikely related to the fact that describes an
action i.e. it's used as a verb and started to used like this when there
wern't to many brands of photocopyers on the market. In a case like this
it is more likely to add to the value of the trade mark (?) on the bases
that you can't "Coca-Cola" anything - it simply "is it"

> IIRC there was a thread on this last year when Google started issuing
> cease and desistage to all and sundry using their logo, and made
> noises about not wanting "google" used as a verb, because they didn't
> want their trademark to lapse through not defending it. IIRC also,
> there was comment about this being standard practice to establish a
> defence, but that they didn't intend to actually sue anyone.
This is another example of what I was trying to say above. Google has
become a verb as people refer to "googling" as a seach activity - which can
only improve googles value as a search engine and hence the companies
value.
>
> cheers
>
> mark



--
Chris Mayhew using Xnews !