Country specific TLD's & Trademark

[SuperZu]

Hi to all
I have a question about trademark protection. Our web site is a well-known international brand that exists only online. We have an internationally registered trademark mytrademark.com. We are very well know both in the country where we are based and abroad, our web site has 100.000 + unique visitors daily. Third parties however have started using our name by registering country-specific domain names such as mytrademark.co.uk and mytrademark.de and putting affiliate content from our direct competitors on these pages. Is there anything we can do about this? The trademark we registered is mytrademark.com, not just Mytrademark. Does this make any difference? It is clear that mytrademark.nl etc. have been registered with the purpose of making money using our well-know brand. Any advice welcome.

[mcanerin]

Trademark law is purely a local system - there is no international trademark law - only some treaties between countries.

Given that, YMMV (Your Mileage May Vary) depending on where your trademark is being registered. However, every ccTLD provider I've ever dealt with has had a cybersquatting clause in it, and this is the one you would use.

Remember, since trademark law is local, you have to go to each ccTLD provider and have the offender removed. Further, you typically can't remove, them per se, you simply take over the domain (if you are not interested in registering the domain, then it's hard to claim that you are interested in protecting your rights, and you'll get little sympathy from the ccTLD provider)

The other thing to remember is that since it's perfectly acceptable for 2 people to register 2 trademarks in 2 different locations, unless you pass the test for "famous brand" and "confusion" you may be out of luck. For example, if your brand was IBC (International Business College) and someone registered IBC.com because they were the International Breeders of Cats Society, you'd have a difficult time claiming consumer confusion.

Remember that just because you come up with a name, doesn't mean you can stop people from using that name forever and everywhere - there has to be more of a reason than that.

Your best defence is to register your trademark in the countries you are interested in trading with, and with that in hand, go after the cybersquatters.

You can find the world ccTLD registrars here:

http://www.iana.org/cctld/cctld-whois.htm

Yours,

Ian

[SuperZu]

Thanks Ian
I will follow your advice. We are indeed interested in registering these domains and there is no doubt that our brand name is being "used" to sell the same services we are selling. It is a well-known name worldwide for our industry and the trademark mytrademark.com has been registered worldwide as well.

[mcanerin]

Then go after them with a vengeance, take no prisoners, and good luck!

I dislike cybersquatters - they are leeches attempting to trade off of other people's hard work.

Ian