My dilemma:

I am about to launch a company where our one work Domain is also the company name and will also be submitted for a trademark. However, our suffix is not .com as that is in use by another company in another market. Their company name is ‘blank’ ‘blank’ ‘domain name word’ – that one word is our entire company.

Is there any other way we could acquire this domain?

Thank you for the advice in above post.

I wonder whether it would make any difference if he was using the same domain name to sell other competing products on the same website.

This is a bit off point but I don’t know whether anyone has heard of the Ward Brodie case in Australia? Ward Brodie sold RESTORIA hair colouring and the UK division and the Australia division went it’s separate ways. The Australian Restoria only had the rights to use the trademark in Australia. Two affiliate websites were sued by the UK division of Restoria in the Federal Court for use of the trademark RESTORIA on the internet. The name Restoria appeared on the page amongst a lot of other products the affiliates were selling and at the checkout, so the UK plaintiffs argued. They weren’t of course arguing that the affiliates were using their domain name, but that they were using their trademark ‘on the internet’ (equivalent to the Zippo argument – ie you are targeting users in the jurisdiction). There was ONE trap purchase conducted by the Plaintiff solicitors and they brought proceedings based on the one trap purchase. However there was no evidence submitted of ANY of the product having ever been sold in Australia, and it was widely available in Australia through brick and mortar establishments at a cheaper price. The Plaintiffs almost won. The defendants weren’t even selling competing products (hair dye for grey hair for men). However much was made of the fact that they had ‘Australia’ listed in the drop down box, and thus they argued they were ‘targeting’ Australians by making the product available to Australians. There was a case in the US Cecil McBee where a jazz musician was trying to shut down a teenage girls’ clothing label called Cecil McBee. He won a long fought battle in Japan over the trademark, organised three trap purchases, and brought legal action in the US courts. He argued that the website was targeting US users.

The court rejected his argument, pointing to the fact that the website was written in Japanese and most US people would therefore not understand it. Well I don’t know about the latter argument. I understand Japanese and I’d imagine there would be some users.

I know it is a bit off point but I wonder how significant this kind of argument will be with the introduction of international domain names. Certainly if a foreign website was translated into the native language that could be said to fall within the Zippo targeting rules of reaching out to the jurisdiction.

There was also an argument about the legitimacy of evidence about trap purchases. Anyway I’ve said enough. lol