Domain name disputes, UDRP, WIPO and suing people.. :(

[mrdavies]

Hi all, please bear with me here I need some help....

Does anyone here have any experience with the ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) or with WIPO - World Intellectual Property Organization?

I'll try to be brief.. my Ltd co has been up and running for 4 months now, I now have some guy in the states hassling me and threatening to sue me for trademark infringement as my UK Ltd company name is similar to some conference he ran in the states in 1999 and 2001 (yes, a while ago). So far its just a long email chain, but he is becoming more and more threatening and I really need to know where I stand. I spoke with a solicitor briefly but they wouldn't go into detail unless I "instructed" them and coughed up £700

Here is the situation, I registered a personal dot com domain back in 2001 (lets call its domainname.com for now), someone owned the corresponding domainname.net. I thought nothing of it. 4 months ago I set up my Ltd company as domainnamesecurity.com as a natural progression from my own personal domain (and registered all other top level domains whilst at it). The guy who owns the .net used to run a security conference in the states, and sells some t-shirts and that is it. Now after 5 years(!!) he has now contacted me saying i infringe on his trademark and demands I hand over my domain.com and domainnamesecurity.com etc immediately. I have kept it all civil so far and refused, regardless of his threatening behaviour.

I have read up on UDRP, it seems like it will cost him to go after me. I have other things in my life to be concerned about but don't want to just give in to his bullying tactics.. but also I don't want to be faced with some expensive legal action and spending my hard earned on some solicitors

Any ideas/advice would be gratefully recieved! Half of me thinks I should not be worrying about this at all, but I don't want to have to fork out cash just because of this fool..

Thanks

mrdavies

[Cowboy Bob]

US trademark/copyright law does not apply in the UK. Unless your domain can be demonstrated to be infringing on his trademark here in the UK I don't think he has a leg to stand on if he hasn't registered his trademark in the UK.

If you've got to spend £700 for a lawyers advice, it's going to cost you the same as if you sit it out and respond to any action he brings anyway.

Just tell him he has to sue you in the UK as that is where the "infringement" has taken place and that US law has no jurisdiction here, and that furthermore you don't recognise US law. Hopefully that will shut him up.

IANAL, blah, blah, blah.

[TwoWolves]

Ignore him. He doesn't have a case.

[mrdavies]

Ignore him. He doesn't have a case.

Cheers guys for the input. I have basically decided to ignore him, and should something happen deal with it then. But after a quick look through the US Patents Office he has no such trademark registered, also he claims to be "bringing a lot of heat" onto someone else he is in dispute with yet there is no records on the ICANN list of ongoing domain disputes, think he is just full of sh!t and living in his own personal dream world.

Cheers

mrdavies

[where did my id go?]

I would say that if it gets legal make sure you use a specialist legal firm. I had a similar thing here in the uk about 8 years ago.

set up the business, got the domain names etc then after about 18 months got letters from a firm in liverpool claiming infringement. they were also IT and I guess they must have just tried to register the domain. Our solicitors said dont worry.
turned out that our solicitor knew sod all about trademark law, thought that because our logos were different and the trademark they had was just the word that we were fine. Not the case. we ended up having to change the company name, lost loadsbecause we had spent a fortune on marketing.

I wouls do a good search on the trademark systems to see what the story is. I agree that you should be fine but .com is run in the us.

has he quoted the trademarks or IP that he claims you are violating ?

Ask him to provide evidence of the trademarks. If they dont exist then end of story. Im sure that he cant trademark and then go after firms that are already using the name - try looking at the various cases where easyxxxx have tried to intimidate people.


Oh and just a thought but you might want to check the policy of whoever hosts your domain - you dont want to get the registration locked or owt because they get some tulipty legal letter from him. Maybe make sure its not a us company?

[mrdavies]

Thanks again.

Yes he has stated what trademark he thinks I am violating, it turns out we are both in the same industry and came about the name from a similar set of circumstances. Although he believes I stole it, funny how he's waited over 5 years to bring this up. However i've seen no evidence that he owns the trademark, had a quick look on the US Patent Office website.

If it does get legal I will use a specialist, no doubt it will cost the earth. Hopefully it won't come to that though and this fool will let it drop.

I am not overly concerned about the UDRP process, I was more concerned about the threat to sue me, surely launching an international case (albeit between two techies and not big corps!) would cost a *lot* of dosh!