Legal issues in non-US countries?

[mrcog]

I am wandering what's happening if somebody outside the USA registers trademarked name? Because it's not reasonable that US laws apply in that case.

[bauc]

I think because of ICANN, USA law does apply.. afaik.

[jberryhill]

It depends (you knew I would say that) on a lot of things. The UDRP is a contractual requirement of registering a domain name, and you are obligated to submit to disputes under it no matter where you are.

But let's look at what is or is not "reasonable". Is it reasonable for someone to register the typographic error "mucrosoft.com", put up a bunch of porn pop-ups, and thus profit from microsoft's trademark, just because that person is located in, say, Tijuana, Mexico?

[GeorgeK]

The respondent could always opt-out of UDRP, though, by taking it to court in a proper jurisdiction (e.g. their residency, or their registrar's, etc.).

Does "mucro" mean anything in Spanish?

[GiantDomains]

Originally posted by mrcog
I am wandering what's happening if somebody outside the USA registers trademarked name? Because it's not reasonable that US laws apply in that case.

You are right, but TMs can be obtained in each country the company is doing business in.

Example.

coca-cola

McDonalds

TMs in almost every country.

[Silverwire]

Originally posted by jberryhill
It depends (you knew I would say that) on a lot of things. The UDRP is a contractual requirement of registering a domain name, and you are obligated to submit to disputes under it no matter where you are.

Mr. Berryhill,

I thought the UDRP conforms to WIPO rules, a UN organization. Would a TM in the USA carry any more weight than one from the country of East Bohika (or even the much larger West Bohika)?

[mrcog]

Yes, that is an idea. I mean, many things on this world doesn't depend on what is reasonable and what is not. But, if local trademarks are considered in that case, than why somebody would care about the American trademarks. If not, than it would be fair for american compaines to respect other countries trademarks. But in that case, what if there's, for example, McDonalds as a local trademark in some other country, and is older than american and quite popular in its country? Would it be fair that McDonalds close their site? Off course, maybe this is not possible for McDonalds, but for some other name, why not?
This seems quite complicate...

[Ari Goldberger]

There is no question that you would have to submit to a UDRP action, since this is agreed to in every domain name registration agreement. The other issue is whether there is jurisdiction in court with respect to a U.S. federal trademark action under the Lanham Act. There are numerous issues involved here. However, the principle one is whether the U.S. court has personal jurisdiction over the domain owner. E.g., Has the domain owner transacted business in the U.S.?; Has the domain owner intended an effect in the U.S.? These are issues that will have to be investigated in the context of the specific factual situation.

[jberryhill]

Ah, there is a very interesting latent issue back there.

For example, in one WIPO case I defended, the complainant asserted a Taiwanese trademark registration. There was a part of me that was almost hoping we would lose the case, so that it could then be pointed out that a UN agency had taken action based upon a document issued by the government of Taiwan.

But the bottom line for the UDRP is that no particular law carries "more weight" than any other. Establishing the existence of a trademark, under whatever law is relevant to the complainant, is simply one of three conditions required for transfer under the UDRP.

Similarly, the "legitimate rights or interests" condition of the policy is determined by reference to the respondent's jurisdiction. For example, several cases involving US respondents have referred to the respondent's Constitutional right of free speech (in criticism cases). There are domain registrants who do not have such a right, and hence do not have such a defense.

[jberryhill]

As Ari mentions, whether a US court may exercise personal jurisdiction over a domain name registrant can depend on a lot of facts specific to a particular situation.

If a US TM owner decides they cannot obtain personal jurisdiction over the domain name registrant, and if the registry is located in the US (I said registry, not registrar) they can still bring a special type of suit under the ACPA at the location of the registry, to attempt to obtain the domain name. That type of action is technically filed against the domain name itself, and not the registrant. Hence, damages would not be available.

Regardless of where the registrar is located, they are all contractually bound to lock a domain name when they receive notice of a lawsuit anywhere.

[adoptabledomains]

Due to the unique fact that the root servers for most global TLD's are physically located in the US, it has been used as a source of creating US venue for cases. I read about one involving .com which Verisign has on servers in Virginia.

With ccTLD's this would probably not be the case, and you may have other jurisdiction problems and hurdles maybe limited to the host ccTLD country and where the claimants reside.