Need your help guys!

[Sionnach]

Hey guys,
I recieved my first C&D this week for a name i have registered,its .li, as far as i know the company has no trademark in Liechtenstein but i dont know for sure.The letter they sent is pretty much the standard from what i have been reading,10 days to get in touch about giving over the name or its to court i go and the costs will be huge etc etc,what do i do?It earns some rev and i would like to keep it or at least work out a little deal with them for it,can anyone let me know what i should do?The company is based in europe but since liechtenstein is not in the eu do they have a right to it?

 

[typist]

.lt

1) .lt is lithuania, not liechtenstein (.li).

2) Trade mark name : [removed]
Trade mark No : [removed]
Trade mark basis: CTM
Number of results: 4 of 7

[removed - not applicable]

http://oami.europa.eu/en/default.htm

 

[Sionnach]

Sorry i meant .li,i have changed the post. the domain is a liechtenstein domain.

 

[typist]

In this case, depending on what basis they claim for asking you to drop the registration, you should consider asking for proof of a valid trademark registration in Liechtenstein. Community trademarks do not cover the European Economic Area (EEA) of which Liechtenstein is a part. Liechtenstein has ratified the Madrid Protocol, however my very brief and non-exhaustive search here http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp did not reveal any traces of marks containing the word in question or held by you-know-who.

 

[Sionnach]

thanks alot tpyo,i really appreciate the help.Anyone any experience with establishing that the company has no right to the name and bargaining with them?

 

[typist]

Anyone any experience with establishing that the company has no right to the name and bargaining with them?

Under no circumstances would I try to bargain with them. This would only be construed as evidence of bad faith. Trying to establish that they have no rights to the name doesn't seem like a useful undertaking to me. However if you would wish to strenghten your de facto rights to the domain, you could consider using it for something else than a parked links page, eg a consumer information page. Including some text ads or sponsored links to contribute towards hosting costs isn't uncommon for non-profit consumer information sites. I'm just thinking out loud here.

Have a look at the "Rules of Procedure for Dispute Resolution Proceedings for .ch and .li Domain Names" if you're really determined on following through - link "Dispute Resolution" on nic.switch.ch

Interestingly, I can't immediately see any evidence of any previous proceedings regarding Liechtenstein domain names.

SWITCH mentions the following in their explanation of their dispute resolution process: "Materially it is possible to claim a clear infringement of the Swiss rights in distinctive signs, including the Swiss Unfair Competition Act." This may seem misleading with regards to Liechtenstein domain names; I assume litigation under Liechtenstein laws would be more appropriate. I do not know whether the company in question is known as aggressively litigious, but engaging in litigation or even arbitration concerning a domain name relevant to a population of 33'987 (according to wikipedia) does not immediately strike me as a very rational course of action in terms of increasing shareholder value of a listed company. Unfortunately, irrationality abounds (as does pseudo-rational ignorance, and I'm including myself here).

 

[DNQuest.com]

Countryies will honor other countries TMs, p[lus the internet is global and one can establish a global recognition and come under common law TM. Without knowing the name, thats all I can give...

 

[typist]

internet is global and one can establish a global recognition and come under common law TM.

The internet is global but jurisdiction remains mostly local.

If you're referring to "common law" as opposed to statutory law: maybe.
It may be worth noting though that Liechtenstein is a civil law country, and doesn't share the extensive non-statutory law system of the British and US common law tradition.

In this case, in Liechtenstein, as stated in the Rules of Procedure to which I included a link above, paragraph 24 (c), only the rights owned under the laws of Liechtenstein are relevant for “.LI” disputes.

Consequently, the Expert will solely take into consideration the “.LI” domain names and Liechtenstein trademarks invoked by the Claimant in a request.


I just stumbled upon this interesting case involving the same Registry and Dispute Resolution Procedure, where Stelios Haji-Ioannous IP Holding Company, easyGroup IP Licensing Ltd, as Claimant, had its request for transfer of easyhotel.ch denied (notably by a single panelist), even though "It is undisputed that the airline services provided by the easyGroup and the name “easyJet” are well-known in Switzerland.": http://www.wipo.int/amc/en/domains/decisions/html/2005/dch2005-0019.html

I stated previously that a hadn't yet seen a .li dispute in arbitration. Here's one case: http://www.wipo.int/amc/en/domains/decisions/html/2005/dch2005-0009.html

 

[Sionnach]

Thanks for the info,tpyo you have been extremely informative and i really appreciate it,a real addition to the forum,i think il just let them have it,thanks again!

 

[typist]

i think il just let them have it,thanks again!

good idea. unless you had serious plans, it may not be worth sleepless nights. :greensleepw: