How should trade mark owner deal with domain name infringement

[elbranch]

What is the best approach when someone has a trade mark (and the .com.au) then someone else registers the .net.au and uses it in a way which infringes on the trade mark.
Assuumptions:
- Both parties are small businesses so not made of money to pursue or defend
- Trade mark rights are watertight and not open to interpretation

Friend says he wants to send an email but I think that is way too informal. I can understand he doesn't want to spend money for legal help at this stage when the offender might accept immediately that he would have no hope of defending his right to use the domain name, but I think he should lay the groundwork for taking the matter further if the offender is not agreeable.

I also think it is important to register a formal complaint and order because from my perspective the offending domain name must be deregistered now that the owner has demonstrated what it is to be used for.

I am aware that if a domain name hasn't and isn't being used (including not having related links on a landing page) then this can be a defense against trade mark infringement, but in the case I am discussing I don't think it is possible to take the domain name back to this undetermined state by removing any website connected to the domain name.

So from my perspective I think there should be a demand to not only stop using the domain name but to also deregister it and although legal advice would be good I agree that this might be an unnecessary expense and perhaps a formal letter of demand might be enough as a first step.

What do you think about a legalistic letter which includes the politely worded threat that the next step will be to involve lawyers in which case there will be a demand for costs and damages (damages will be difficult if not impossible to determine but it sounds good). Or is an email the right way to go and is an approach which will not have a negative impact on any future legal action.

Has anyone had any experience with this? Thanks.

 

[elbranch]

I hate long posts I don't know why that post was so long the edit option was gone by the time I came back to it. Anyway if you hate long posts then just skip to this post and answer the question:
Someone has infringed on your trade mark by buying and using a domain name. What should be your first approach?

A: send an email
B. send a more formal letter of demand
C. see a lawyer

 

[Erwin]

Use the friendliest means possible, always.. Write them a letter, and raise your points..

 

[segator]

Your best option is to speak with Erhan from CooperMills Lawyers who specialises in trademarks, IP, domains .. and is a sponsor of DNTrade.

Level 4, 459 Little Collins Street,
Melbourne VIC 3000 Australia
T: +61 (03) 9866 8850

 

[snoopy]

Hard to know without know the term etc. Half the time when someone things the other person is infringing it isn't.

Personally if there is infringement I'd say send an email or do nothing. It is not worth chasing unless the infringement is actually costing money in lost sales etc.

 

[findtim]

Has anyone had any experience with this? Thanks.

yes, but i was the bad guy LOL, its generally called " passing off" but your description doesn't give us any clues to determine that + do not post it + erhan is the only one that can tell you the right info.
what happened to me is they sent me a lawyers letter and i closed the site, bought a different domain name and started again, they then sent me another lawyers letter and i told them to shove it.
but the laws on domains in 2001 were very unknown, today its clearer i think.
its hard to say based on your info, detail everything and your reason then get some professional advice.
i have a client that has a .com.au that conflicts with a trademark of another company and they have not been succesful in having them give them the domain. so ? who knows.

tim