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Domain name is similar to TM. Is it worth it to fight?

Started by Zora2012, Jul 11, 2022, 03:10 AM

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Zora2012Topic starter

I own a domain called ferari.cctld. Recently, I received a letter informing me about their intellectual property rights.
The interesting part is that the TM Ferrai is not registered in the ccTLD in which the domain is registered, and I have only had 5 visitors in a month of parking. I am unsure if this is a scam, but I am hesitant to rent out the domain as there seems to be interest in it.
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Abhinavjain

It's difficult to determine without knowledge of the country's laws, but defending your domain in a lawsuit may be challenging. However, the UDRP procedure is available in this area, so trademark owners can file a complaint, but it's possible to protect the domain rights.

Though the domain doesn't infringe any laws, using it for parking may indicate unethical registration practices, and precedents in similar cases should be examined. Nevertheless, fighting for the domain is advisable since there's nothing to lose in this situation.
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metallexportprom

Prior to the company's lawsuit over the domain name's similarity to another trademark, it's possible to protect it. To safeguard the domain name from third-party infringement and ensure its security, there are certain steps that can be taken.

One way to protect the domain is to register it as a trademark, which guarantees 100% protection against any attempts to take it away. If a company registers the domain first as a trademark, they won't have to worry about anyone else registering a similar trademark and claiming infringement of exclusive rights. In such a case, the company can legally prohibit third-party use of the domain and similar designations, destroy counterfeit products, and demand compensation for the illegal use of the trademark.

Take, for example, the scenario where a company is caught illegally marking goods with someone else's trademark, leading to the copyright holder receiving $100K in compensation. The amount of compensation was calculated by doubling the value of the goods on which the trademark was illegally placed.

Simply registering a trademark isn't enough to protect the domain name. It must also be used in tandem with the trademark, such as placing the trademark and site address on merchandise, labels, signage, advertising materials on different media platforms, on TV or the internet, as well as on documentation related to goods or services and on the website. Otherwise, someone who wants to register the same trademark could quickly terminate the legal protection.
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tamil1

The fact that the TM for Ferrari is not registered in your specific ccTLD could be a significant point in your favour. This could indicate that you may have some rights to the domain, especially if you're not using it to mislead or infringe on their brand.

You mentioned that you've had only five visitors in a month, which raises a flag about the potential for significant traffic – it seems like there isn't much interest in your domain. However, that doesn't mean you should act rashly. The letter you received could either be a legitimate inquiry or an attempt to intiмidate you into relinquishing the domain. Sometimes companies send out these letters as a form of protection, particularly if they have a global brand presence.

Since you've seen potential interest in renting the domain, it may be worthwhile to explore that further. Engaging with prospective renters or buyers could provide you with insights on the domain's value. But be cautious; if you decide to proceed with any business dealings, make sure to document everything and avoid any actions that could be interpreted as an attempt to capitalize on the Ferrari brand, which could heighten the risk of legal issues.

Consider consulting with a lawyer who specializes in intellectual property rights and domain disputes. They can provide you with guidance tailored to your circumstances and inform you about your rights and responsibilities in this scenario. Additionally, keeping track of any correspondence with Ferrari or any other parties involved is crucial. If things escalate, having a clear record will be beneficial.
While the thought of generating income from the domain is appealing, you need to balance that with the possible risks. It's essential to tread carefully in these matters, as the ramifications of not doing so could be dire. Therefore, educate yourself about domain law, and be prepared for any outcome.
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