Domain Name Trademark

Discussion in 'NZ Computing' started by markd, Jul 30, 2003.

  1. markd

    markd Guest

    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.
    markd, Jul 30, 2003
    #1
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  2. "markd" <> wrote in message
    news:...
    > 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.


    Domains are served on a first in first served basis. You own it, it's yours,
    regardless of anyone else claims. If it's up or not it's still up to you.
    Trademarks do not give ownership to an internet domain, and therefore you're
    not required to give it to anyone.

    Of course you can look for a lawyer for actual consultation.

    --
    Mauricio Freitas
    Handhelds, mobile: http://www.geekzone.co.nz or
    http://www.bluetoothguide.com
    Bluetooth guides: http://www.geekzone.co.nz/content.asp?contentid=449
    Mauricio Freitas, Jul 30, 2003
    #2
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  3. markd

    madknoxie Guest

    In article <>,
    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?


    My advice would be to fight it, see if they can be bothered following
    through on their threat. Think about who can actually make you surrender
    your domain name, can the Govt yet? The DNC (Domain name commissioner)
    might be able to... and that UN thing too. Think about what grounds they
    would take your domain name, and fight that.

    This firm is probably called MyDogs Limited or Corporation, or whatever
    their real name is right? Tell them to get mydogsltd.co.nz or
    mydog.net.nz, etc. Tell them to get stuffed either way.

    About finding a lawyer, head over to http://www.fightthepatent.co.nz/ -
    this site was set up to fight the bizarre e-commerce patent thanks to DE
    Technologies. But the lawyers involved there sound like they are
    experienced with this sort of thing. Or try your local community law
    centre, they maybe able to help you prepare a response for free.

    Hope that helps. Remember, your not competing or trying to pass yourself
    off as this group, you're not doing anything wrong.

    --
    madknoxie
    Web hosting and $35 .nz domains: http://www.ivision.co.nz/
    madknoxie, Jul 30, 2003
    #3
  4. markd

    PJ Lee Guest

    "Mauricio Freitas" <> wrote in message
    news:L7KVa.8249$...
    ..
    >
    > Domains are served on a first in first served basis. You own it, it's

    yours,
    > regardless of anyone else claims. If it's up or not it's still up to you.
    > Trademarks do not give ownership to an internet domain, and therefore

    you're
    > not required to give it to anyone.
    >
    > Of course you can look for a lawyer for actual consultation.
    >


    May be in the rest of the world.
    But in New Zealand, our govt seems to have created their own set of rules
    which differ from other countries. Remember steinlager?
    PJ Lee, Jul 30, 2003
    #4
  5. markd

    TEX Guest

    Mark wrote:

    > I think that something like mydogs.co.nz is so abstract that no-one can
    > claim to own it. Something like cocacola.co.nz or xerox.co.nz might be a
    > little tougher to hold on to..
    >
    > Cheers
    > Markus
    >
    >



    Then everyone must of heard of the blackpower or was it the mongrelmob
    domain that someone decided to register...in quoting Markus
    "might be a little tougher to hold on to.."

    TEX
    TEX, Jul 30, 2003
    #5
  6. markd

    markd Guest

    > This firm is probably called MyDogs Limited or Corporation, or whatever
    > their real name is right? Tell them to get mydogsltd.co.nz or
    > mydog.net.nz, etc. Tell them to get stuffed either way.


    Yeah, they have a formal/longer name for their company. My concern is
    they have the NZ trademark of just the "MyDogs". Will Toyota be able to
    take away myrav4.co.nz? Or a life insurance company claiming
    mylife.co.nz?

    Their whole point is about the confusion of the name and the possibility
    of me passing off.

    Thanks

    Mark.
    markd, Jul 30, 2003
    #6
  7. markd

    Max Guest

    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.



    It really depends on how generic it is. eg if you registered nike.com,
    then they could claim it, however if you registered coolshoes, and it
    was being used for a website that had cool shoes on it, or was a shoe
    shop, then it would be fine.
    Max, Jul 30, 2003
    #7
  8. markd

    madknoxie Guest

    In article <>,
    markd <> wrote:

    > > This firm is probably called MyDogs Limited or Corporation, or whatever
    > > their real name is right? Tell them to get mydogsltd.co.nz or
    > > mydog.net.nz, etc. Tell them to get stuffed either way.

    >
    > Yeah, they have a formal/longer name for their company. My concern is
    > they have the NZ trademark of just the "MyDogs". Will Toyota be able to
    > take away myrav4.co.nz? Or a life insurance company claiming
    > mylife.co.nz?
    >
    > Their whole point is about the confusion of the name and the possibility
    > of me passing off.


    Maybe offer to have a link to their website on your homepage? As a
    gesture of goodwill...

    --
    madknoxie
    Web hosting and $35 .nz domains: http://www.ivision.co.nz/
    madknoxie, Jul 30, 2003
    #8
  9. markd

    Mark Guest

    I think that something like mydogs.co.nz is so abstract that no-one can
    claim to own it. Something like cocacola.co.nz or xerox.co.nz might be a
    little tougher to hold on to..

    Cheers
    Markus
    Mark, Jul 30, 2003
    #9
  10. markd

    Max Guest

    On Wed, 30 Jul 2003 20:40:47 +1200, Max <>
    wrote:

    >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.

    >
    >
    >It really depends on how generic it is. eg if you registered nike.com,
    >then they could claim it, however if you registered coolshoes, and it
    >was being used for a website that had cool shoes on it, or was a shoe
    >shop, then it would be fine.



    Also does it have a site connected to it now that relates to the
    domain. If it does, they can't accuse you of being a squatter.
    Max, Jul 30, 2003
    #10
  11. markd

    pbs Guest

    markd wrote:
    >>This firm is probably called MyDogs Limited or Corporation, or whatever
    >>their real name is right? Tell them to get mydogsltd.co.nz or
    >>mydog.net.nz, etc. Tell them to get stuffed either way.

    >
    >
    > Yeah, they have a formal/longer name for their company. My concern is
    > they have the NZ trademark of just the "MyDogs". Will Toyota be able to
    > take away myrav4.co.nz? Or a life insurance company claiming
    > mylife.co.nz?
    >
    > Their whole point is about the confusion of the name and the possibility
    > of me passing off.


    Here is a site about NZ domain name desputes in NZ.
    http://www.bsw.com/articles/domainname.html

    The site advises looking at international cases for a clue
    as to how the law will evolve in NZ.

    Have a look at these links. They explain the state of play for
    Canada, USA, UK/Europe.

    http://www.gcwf.com/gcc/GrayCary-C/News--Arti/Journal/0401_JIL.doc_cvt.htm
    http://www.netjus.org/pages/articolix.asp?article=32

    Try a google search on "Marks and Spencer domain"
    Marks and Spencer v. One in a Million
    The court decided aginst One in a Million who were considered to
    be "Domain name squatting".

    Also try this one: Telstra v Nuclear Marshmallows
    The panel was of the opinion that use of the domain name would
    have been unlawful under the laws of passing-off, trademark
    infringement or consumer protection.
    pbs, Jul 30, 2003
    #11
  12. markd

    markd Guest

    > >It really depends on how generic it is. eg if you registered nike.com,
    > >then they could claim it, however if you registered coolshoes, and it
    > >was being used for a website that had cool shoes on it, or was a shoe
    > >shop, then it would be fine.

    >
    > Also does it have a site connected to it now that relates to the
    > domain. If it does, they can't accuse you of being a squatter.


    Yes it is my personal site with some photos and stuffs. However the
    homepage is blank as I use a different file name other than index.html.

    I have had a look at a few websites, including IPONZ and Legislation
    Govt, I don't think Fair Trading Act will work as I am not doing
    anything to compete or mislead. The name (eg mydogs) is pretty generic,
    many people can easily have URLs like www.ihug.co.nz/~mydogs, but
    somehow it was trademarked.

    I would like to find out if the Trade Marks Act now covers domain names,
    which is like an address.

    Thanks

    Mark.
    markd, Jul 31, 2003
    #12
  13. markd

    Chris Mayhew Guest

    markd <> wrote in
    news::

    > 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.


    The easy bit first - there are 2 lawfirms you can go to if you want
    http://www.jaws.co.nz/
    http://www.ajpark.co.nz/default.asp

    Now, I'm not a laywer but I was working on a similar issue this afternoon.
    I have a domain name, a LTD company name, and I want to apply for the same
    name as a trade mark, of course in my case there isn't a problem.

    It might be interesting to look up their trade mark

    http://www.uspto.gov/ (if they are american)

    I haven't found any info from my research that suggests that a trademark
    has some higer standing than a domain name (squatting issues aside),
    besides they are administered by 2 separate bodies nethier of which can say
    what the other can or can't do.

    How are they going to take it off you anyway ? Maybe they can sue you ?
    I'd not worry about a lawyer until you get a court date. I'd consider
    selling it to them at a good profit (to show you mean business) and if they
    bite then get a lawyer for advise as to how much you should ask for.

    I have had a little experience dealing with american companies and their MO
    seemed to be a series of demands based on the idea (I assume) that they
    were bigger than me and therefore they could treat me like that.

    From my experience, if you don't offer to sell the domain name to them at a
    profit or not at all they will not take you seriously and simply take
    advantage of you.

    If you arn't bothered about selling it just say NO and see what kind of
    offer they come back with and remember if they do come back with an offer
    it will be much less than they are prepared to pay. Also bear in mind if
    you are not in the business of buying and selling domain names the profit
    you make should be tax free as it is a capital gain on private assets.

    Good luck !
    Chris Mayhew, Jul 31, 2003
    #13
  14. markd

    DPF Guest

    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?


    Maybe - it depends on the facts.

    Firstly domain names are allocated on a first in first served basis
    and the only way (under current .nz policies of InternetNZ) you can be
    forced to surrender your domain is if the other party obtains a court
    judgement.

    There have been successful cases in NZ such as oggi and cadburys
    winning names back off cybersquatter.

    Things a Court would look at would probably include (IANAL):
    - when you registered the name
    - what use, if any, you have made of it since
    - have you tried to sell the name back to the trademark holder
    - have you used the name to pass off your site as the trademark
    holders

    >Are there any good copyright/trademark lawyers in NZ I can contact?


    Peter Dengate-Thrush has considerable experience in domain name and
    trademark disputes. His e-mail address is barrister at chambers dot
    gen dot nz.

    DPF
    --
    Blog: http://www.kiwiblog.co.nz
    E-mail:
    ICQ: 29964527
    MSN:
    DPF, Jul 31, 2003
    #14
  15. markd

    markd Guest


    > How are they going to take it off you anyway ? Maybe they can sue you ?
    > I'd not worry about a lawyer until you get a court date. I'd consider
    > selling it to them at a good profit (to show you mean business) and if they
    > bite then get a lawyer for advise as to how much you should ask for.
    > you.


    I did get an offer a while back (but not sure if it was from the same
    company), started at $100 and went up to a few Ts, but I simply have no
    intention to sell. If I did, wouldn't I be treated as cybersquatting?

    I guess the only way they can take it away from me is by court order to
    my ISP/Domainz, provided the Court found my personal 'dogs' site is
    misleading, and/or passing off the said company.

    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?

    At this point I guess I will just wait for their next move.

    Thanks

    Mark.
    markd, Jul 31, 2003
    #15
  16. markd

    T.N.O Guest

    "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.

    I agree with you, but with something like this it could be kinda hard to
    prove otherwise.
    T.N.O, Jul 31, 2003
    #16
  17. On Thu, 31 Jul 2003 22:30:22 +1200, DPF wrote:

    > Peter Dengate-Thrush has considerable experience in domain name and
    > trademark disputes. His e-mail address is barrister at chambers dot gen
    > dot nz.


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

    I'd avoid him if I was you. There are other IP lawyers to use.

    Oh, and DPF, I think I now know why you refused to explain why PDT wasn't
    removed entirely from ISOCNZ affairs when his lies were unearthed.
    Uncle StoatWarbler, Jul 31, 2003
    #17
  18. markd

    The Flash Guest

    This is a very interesting issue, I asked my business advisor about this, he
    ran it passed some colleges in the legal fields and basically came up with
    the following three questions.

    1)Are you marketing a product or service that is an equivalent to those
    marketed by 'MyDogs'?

    2)Does your websites (domain) content directly affect positively or
    negatively how people will react to the 'MyDogs' brand name?

    3)Are you obtaining 'good will' towards your domain by the active marketing
    of the 'MyDogs' within NZ?

    If the answer is yes to any of the above, mydogs can challenge the control
    of your domain name.

    The third one is the hard one, IP (intellectual Property) laws now mean the
    'good will' can be argued as'IP' if you register 'Madonna.co.nz' it would be
    a prime target to be taken from you as your claim has less weight than that
    of those who claim against you.

    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.

    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.

    His final advice was to offer to lease the name to them at a level you would
    be acceptable. looking that the government blew a million bucks on
    newzealand.com, I guess $50000 a year should be chicken feed for mydogs.

    "markd" <> wrote in message
    news:...
    > 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.
    The Flash, Jul 31, 2003
    #18
  19. markd

    The Flash Guest


    >
    > 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' as we do not allow this level of personal
    freedom.
    The Flash, Jul 31, 2003
    #19
  20. markd

    DPF Guest

    On Thu, 31 Jul 2003 12:38:21 +0000, "Uncle StoatWarbler"
    <> wrote:

    >On Thu, 31 Jul 2003 22:30:22 +1200, DPF wrote:
    >
    >> Peter Dengate-Thrush has considerable experience in domain name and
    >> trademark disputes. His e-mail address is barrister at chambers dot gen
    >> dot nz.

    >
    >PDT also has well documented credentials as a lying, backstabbing deceitful
    >bastard.
    >
    >I'd avoid him if I was you. There are other IP lawyers to use.
    >
    >Oh, and DPF, I think I now know why you refused to explain why PDT wasn't
    >removed entirely from ISOCNZ affairs when his lies were unearthed.


    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.

    DPF
    --
    Blog: http://www.kiwiblog.co.nz
    E-mail:
    ICQ: 29964527
    MSN:
    DPF, Jul 31, 2003
    #20
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