Hello there,
I have recently formed a UK limited company and had hoped to register a .com version of the business name. However I have found it is registered to someone in the US.
At the URL it states the following: “We reserve all intellectual property rights to all trademarks, service marks to? [they spell out the .com version of the name and related versions of the trademarked name]”.
I would like to know: could there be any legal issue if I used the .co version of the name? I understand their trademarks etc likely only apply in the US but I am a bit less clear where domain names overlap into intellectual property issues.
Thank you.
Colin
Alasdair Taylor's Answer
Hello Colin – thanks for your question. I have assumed for the purpose of this answer that your business is in the same field as the business/trade marks of the owner of the .com domain.
You should treat with caution what follows; there are numurous exceptions to the general rules.
Trade mark rights are fundamentally territorial. There are two sorts of trade mark rights that might be relevant here: registered trade mark rights, and unregistered trade mark rights (in the UK, rights in the tort of passing off). In addition, you have to consider the UDRP, which governs domain name arbitrations concerning .co domain names.
You should list the jurisdictions in respect of which you will use, or may use, the domain name (e.g by offering goods or services to customers in a jurisdiction under the domain name, or targetting users in the jurisdiction).
In respect of each such jurisdiction, and in respect of Colombia (.co is the ccTLD for Colombia), you should ask the following questions:
(i) Does the owner of the .com domain have any applicable registered trade marks in the jurisdiction? In the UK, this would include both UK and Community trade mark rights.
(ii) Does the owner of the .com domain do business in the jurisdiction under the relevant mark, whether directly or indirectly? This could give rise to unregistered trade mark rights.
(iii) Does the trade mark have a reputation in the jurisdiction, or is trade mark is a famous or well-known mark in the jurisdiction?
If the answer to all these questions is “no”, your usage of the .co would probably be low risk. I say “low risk” because, under the UDRP, the complainant does not strictly speaking have to have rights in the jurisdiction in which you are trading to establish a claim. Once the complainant has shown that he has rights in an mark identical to the domain (as should be possible here), he then needs to show: (i) that you have no rights or legitimate interests in the domain; and (ii) that the domain was registered in bad faith. The more descriptive the domain name / mark is of the business, the harder it will be for the complainant to demonstrate no legtimate interests / bad faith.
