Trademark question .eu

[fleshas]

Adult domain with 300k visitors a month. Eu TLD. It is not for sale, my friend uses this for his site.
It is exactly the same as one of the most famous adult sites around the world.

Trademarks registered:

Australia
Hong Kong, SAR of China
Iceland
International Registration
Mexico
New Zealand
Norway
Singapore
Switzerland
Taiwan, Province of China

We want to save this domain. Any posibilities to save this?


My friend got an email:

Dear Sir

We are lawyers acting on behalf of XXXX Ltd. of Hong Kong, successor in title to Jager and Polacek GmbH of Austria (hereinafter the "Client").

It has come to our Client's attention that you are the registered owner of the domain name <XXXX.EU> (the "Domain Name"), registered on 19 May 2006.

In addition, following our request to the European Registry of Internet Domain Names (EURid) based on our Client's trade mark rights in the term XXXX, EURid have revealed that you had acquired the Domain Name on 29 January 2008.

Our Client has developed significant goodwill in the term XXXX. As you are most certainly aware, www.XXXX.com is one of the world's most famous adult websites. Our Client's website available at www.XXXX.com is one of the most visited websites in the world and in many countries. Our Client has used the brand XXXX in interstate and international commerce since 2006 and has since developed and acquired very significant notoriety and goodwill in the term XXXX, its services and its main website, www.XXXX.com.

Moreover, our Client holds several trade mark registrations worldwide in the term XXXX, including an International Registration XXXX, number 1003223, registered on 22 April 2008.

In view of the above, you must be aware of our Client's brand and services.

The Domain Name is identical to our Client's trade mark. Our Client has indicated to us that it has not authorised you to register or exploit the Domain Name. Our Client considers that your registration and use of the Domain Name is detrimental to its trade marks, trade name, goodwill, reputation and business.

Your registration and use of the Domain Name clearly infringe our Client's intellectual property rights and constitute an act of unfair competition. As a result of this infringement and misrepresentation which is detrimental to its goodwill, reputation and business, our Client's is likely to suffer a loss.

In addition to the Domain Name, the website available at the URL www.XXXX.eu (the "Website") to which the Domain Name points, reproduces our Client's exact trade mark several times. The Website is particularly detrimental to our Client since it is used in relation to services which are highly similar to those available at our Client's website www.XXXX.com and has a look and feel which is very similar to our Client's website www.XXXX.com. The Website suggests the existence of some form of association, endorsement or link between our Client's brand and services, the Domain Name and the Website. Our Client considers that you are seeking to attract traffic to the Website by deliberately creating confusion between our Client's services and the Website to free ride on our Client's goodwill and generate undue financial gain as a result.

On behalf of our Client, we therefore require that, within ten (10) days of your receipt of this letter, you agree to the following undertakings:

1. That you will take all necessary steps to transfer ownership of the Domain Name to our Client;

2. You will not use or register any sign, logo, domain name, or trade mark identical or similar to any sign, logo, domain name or trade mark held by our Client; and

3. That you will not divulge the Domain Name transfer or these undertakings to any third party.

Please sign and return a copy of this letter to us at the address above to indicate your agreement with these undertakings.

Should you fail to return the signed letter to us within the specified time period, we have been instructed by our Client to take, without further notice, all steps which our Client shall deem appropriate to ensure that your actions cease and that our Client obtains compensation for any damage suffered.

In the event that you or your legal counsel wishes to contact us with regard to this matter, please do not hesitate to contact me at the above contact details.

Yours faithfully

[domaingenius]

With this I would suggest that you firstly check here to see if there is a European trade mark registered;
http://oami.europa.eu/CTMOnline/Requ...tion=CTMOnline

Do they have a trade mark that is valid in ANY European Country ?. If they do ,and you are using for similar or same class of product or service then
will be big problem. You need to establish that first, i.e. does any trade mark they are advising you of cover any Country in Europe ?.

DG

[fleshas]

Yes, they have. i checked.. The site is the similar and that's no good.

We need good lawyers to take a consultation. Can anyone recomend?