Trademarking & Web Domains in E-Commerce

[REL]

Hi,

I'm launching an e-commerce store. After some brainstorming, I've found a name I particularly want to use, trademark & build upon as a brand. I can purchase [name].co.uk, [name].net & [name].com, giving me full domain coverage. The .com domain is currently held by buydomains.com, but I can purchase the rights to this domain from them for £200-300.

Before going ahead, I've checked the following:

- There are no Ltd. companies registered with Companies House using this name.
- There are no UK trademarks registered with the IPO for this name
- There are no Community Trade Marks for this name registered with the Trade Marks and Designs Registration Office of the European Union
- There are no trademarks registered under the international, WIPO/Madrid system for this name.

On this evidence, I am confident a trademark application within the UK would be approved.

The website will be UK based. I would redirect [name].com to [name].co.uk, reflecting this. I would like to offer, as do my competitors, shipping to Europe & worldwide, including the United States. Despite this, I estimate 90%+ of business to be within the UK.

The goods sold will be adult products, primarily sex toys. In addition, the site will stock a limited range of lingerie & bodywear, in common with my competitors.

My concern regards the .com domain name & offering to ship worldwide. There is US clothing wholesaler which holds the US trademark for the name I wish to use. Their trademark covers:

"IC 025. US 022 039. G & S: clothing; namely, lingerie, undergarments, and bodywear; namely, sports bras, tights and leggings."

This company do not appear to have a website or web presence as far as I can ascertain. I doubt they have ever pursued purchasing [name].com.

I'm hoping someone can clear something up for me,

- Would buying [name].com pose a problem as there is a US trademark under this name? Even if I subsequently obtained a UK trademark for the name, would the US company have any claim to the domain due to their earlier registered trademark in the US? Whilst we will sell a limited range of clothing products (lingerie), I would consider us to be in two seperate areas of industry and the risk of confusion to be minimal? There would be no intentional attempt at 'passing off'.

- Would offering shipping to the US have any bearing on the matter?

Perhaps I am being overly cautious. But I'd rather that than throw money behind a project only for the US company to see I'd registered [name].com, and attempt to seize the domain from me or take legal action against me.

If this were a bricks and mortar retail store I'd just go ahead and use the name as the UK and US are completely different jurisdictions & the company have made no attempt to register the trademark internationally.

But with the global nature of the Internet & e-commerce I'm a little more cautious, particularly as .com is the home of predominantly US based sites and US companies are renowned for their litigious nature.

Any assistance much appreciated!

 

[akirk]

if there is a US trademark - and they operate already in the UK in any way, then you may find yourself in breach of their trademark.

domains will only be removed if someone else owns the rights and you don't - it is possible for two sets of people to hold the rights to different things

have a look at www.apple.co.uk - owned by Apple the US tech company - no, yet they grab whatever they can, so if they haven't got that, to my mind that is proof that people can not always take domains - however the case is likely to be different if you are in the same market and therefore braching their trademark!

Take advice

Alasdair

 

[moduslegal]

I would be quite concerned about this

First, I don't know what the US law on this is, but I imagine it would fairly closely parallel UK law. The leading case in the UK was the 'One in a Million' case, where someone had registered, for example, bt.co.uk, marksandspencer.co.uk and so on. The judges used some fairly tortous logic but the upshot was that the well known companies had established prior rights in their trademarks and goodwill so just because you get to the domain first doesn't mean it is yours - you are effectively stealing their goodwill. I can quite easily see the US courts ordering you to hand over [name].com to the US trademark holder

Secondly you may well find that if you do this the US trademark company will appeal to ICANN - the body with responsibility for adjudicating disputes between .com domain name holders - and that is likely to have the same result.

My advice to you - contact the US trademark holder and see if you can get the written okay to go ahead. If not, think twice. Unless you are going to be a small business no-one really notices you could end up having to rebrand

 

[shandp]

Trade mark rights are territorial in nature. It's not uncommon for the same trade mark to be registered in different countries for the same goods by different companies. However, a word of caution: I know of a case where a company was sued in New York for infringement of a US trade mark after the US owner of the trade mark acquired product on-line from a website based in America. The party selling on the American website had legitimately brought the product from a Slovenian manufacturer and the product had been on sale in Slovenia for at least 20 years and the Slovenian company was the trade mark holder in Slovenia. Despite the fact that the Slovenian manufacturer had the right to sell in Slovenia and had nothing to do with the American website it was held to infringe the US trade mark by the New York court. The award of costs ran in excess of US$ 300,000!

You need to register your trade mark in the UK (or European Union) and put a notification on your website that goods offered are not for sale in the USA. Make sure that goods cannot be purchased on-line and sent to the USA.

Please feel free to contact us for further information.

Jon Sutton