Trademark Country Jurisdiction vs Global Web

[shags38]

Hi all,

brief summary of situation:

one of my eCommerce websites is HarmonyBallPendants.com and it is hosted with GoDaddy in the U.S.

The owner of HarmonyBall.com who is also the owner of the trademark "harmony ball" lodged a complaint with GoDaddy saying I was infringing on his trademark. GoDaddy has a policy "supporting intellectual property on the internet" whereby if you believe copyright or trademark infringements are occurring on a site hosted by them they will suspend the account until the matter is settled. They state that this is outside of ICANN policy and doesn't replace it. Hence I have received an email stating that my account will be suspended within 24 hours.

There is a lot more to the account suspension (account holds 34 other domains) that I have broached with GoDaddy so as to not have them penalize all 35 domains but only the "infringer" (coming to the big screen soon!).

QUESTION: The TM is valid for Jurisdiction of the USA only. I would argue that the dot com TLD is a neutral one and that the site is servicing the WWW, Whole Wide World (which in fact it is, sales from many countries) and that in Google Webmaster Tools the target country is set to "not listed".

Can the Trademark of one country prevent the use of that name in other parts of the world (methinks not as that is why there are international TM's and the Barcelona Agreement??) - and in particular with a website with a TLD and not a ccTLD of the country where the TM is valid ??

1. Could the owner of the TM in the USA legally force me to cease and desist with a global eCommerce site with a .com TLD?

2. Could he do so if I had a re-direct in the checkout "residents of the USA click here to complete transaction" and re-direct them to the "same store" in a .com.au site - hence the dot com site is not transgressing the TM by not selling to U.S. customers ??

end of question(s)

Q 2 preamble: (separate to those above) one avenue I have to overcome the GoDaddy thing is to move my hosting of the domain - I was thinking VentraIP LA server - I don't think VentraIP have such a stupid interfering policy like GoDaddy do they? I would transfer the registration of the name and the hosting -

QUESTION 2: if GoDaddy was to shut down my hosting account can they refuse the transfer of the domain name to another registrar, i.e. not unlock it??

Moving the domain does not prevent any future challenges by the Complainant but somehow I doubt there will be any other moves by him given there has not been any "Legal" approaches, just via this convenient avenue available through GoDaddy as an easy way to get a competitor off the air (which it will for only a few hours as long as GoDaddy do not play silly buggars by trying to block the domain transfer).

All comments appreciated.

cheers,
Shags

 

[findtim]

move the domain NOW as you a flogging a dead horse.

THEN, sort out the other stuff.

get back control and then "live to fight another day"


tim

 

[Cooper Mills DomainLawyer]

I agree with Tim move your domains to an Australian registrar, that way you can escape an American UDRP panelist and American Courts - it is always easier to defend yourself here.

I will PM you.

 

[shags38]

Firstly Tim and Erhan many thanks for your responses and advice which I took onboard and reacted quickly.

I have been putting out spot fires for a few days now and hopefully am making some headway.

I transferred the domain registration to VentraIP. Fortunately GoDaddy had not locked me out so I was able to copy the site data including database to my hard drive. I also did the same with 15 other domains actually hosted and transferred the registration of the other 19 domains in that account that weren't actually live - so all 35 are now with Ventra. Also I have filed for a TM.

I then set up an LAX server account with Ventra and re-launched the site there. Today (overnight) the site was pulled down as the result of a DMCA request.

I think I have it figured now but need some advice as to how close I am to having a handle on this.

Whilst the site is (was) hosted in the USA it and the host came under the net of DMCA so there is no avoiding the situation regardless of which host I chose.

Now I need to know the answer to this: If a dot com site is registered with an Australian registrar AND hosted in Australia then can the net of a DMCA request still get the site, i.e. will Australian hosts still pull down a site based on a claim of a US TM?

I would certainly hope not because I am sure the yanks would not effect a DMCA on a US hosted site selling in Australia based on an Australian TM being held by the complainant!

I tried to find a concise answer via the net but all I can gather is that the Copyright Amendment (Digital Agenda) Act 2000 still prevails and that this wasn't subsequently amended to endorse the DMCA as part of the US-AUS Free Trade Agreement of 2004. - as far as a layman like me can figure in the space of a few minutes.

I am not deliberately trying to skirt around a TM but moreso justify my right to sell a product on the internet. The Complainant hadn't made any approaches at all over a couple of years until this recent act due I figure because I was starting to outrank him on a few keyword phrases - I am actually bewildered that he doesn't rank at all for the third and fourth ranked keyword phrases which add up to about 30% of all searches, strange??

The Complainant also has HarmonyBall.com.au - a site that until the swathe cut by the original Penguin, or the Panda update of a few days before, was nowhere to be seen in SERP's - nowhere, now it sits at #1. The site hasn't been updated since 2007 - it is a manky innefectual site with very little content (Googles issue, not his, mine or ours). Given auDA policy how did he get his site as an au? He has no business presence in Australia from all the research I have done - the domain is registered to a Trust here in Oz - the other website / business(es) owned or controlled by the Trust have no connection with Harmony Balls. I wonder if there was a chance meeting somewhere, sometime that led to a "proxy" registering the domain for our U.S. friend?

As I said, the site is a relic - I think it is accidental that it now has high ranking (typical of many since Penguin) nut not so accidental that it is here.

Once I have a satisfactory outcome to the question above I may then contact auDA and let them make their own inquiries? - yes/no?

With my HarmonyBallPendants.com site I am not targeting the U.S. specifically but moreso the whole of the world and of course the U.S. is unavoidable collateral damage.

Again I look forward to comment and advice - I just want to get on with selling product.

cheers,
Mike

p.s. main keyword = Harmony Ball = 480 exacts Worldwide = 170 exacts AU. Something like 4,500 Broad searches and 3.5million search results Globally!! not exactly big fish in anyone's language but we have invested heavily in stock and site development to become numero uno.

 

[payattention]

Why not just put a disclaimer that you're selling knock offs and not legit Harmony Ball's? I figure it's the same as people selling those fake Pandora charms but they describe it as Pandora styled charms so that it's clear they're not the real thing. Perhaps make that change and then submit a counter DMCA. Asked the GF about it and she's never even heard of them and she's into all that Pandora crap so surprised you're even having issues.

 

[shags38]

Why not just put a disclaimer that you're selling knock offs and not legit Harmony Ball's? I figure it's the same as people selling those fake Pandora charms but they describe it as Pandora styled charms so that it's clear they're not the real thing. Perhaps make that change and then submit a counter DMCA. Asked the GF about it and she's never even heard of them and she's into all that Pandora crap so surprised you're even having issues.

Thanks for your valuable input General ... I think?

They are not "knock offs" .... they are the real thing my friend and this is a real situation.

cheers,
Shags

 

[payattention]

Well submit a counter DMCA if they're not knock offs. Why would they chase you otherwise though?

As for whether a DMCA complaint has standing for a site registered and hosted here, I would guess no but that doesn't mean the host won't cave and comply with it anyway. Your best bet is to counter IMO and explain they are legit balls.

 

[helloworld]

Yeah, get you balls out

 

[findtim]

whos got the biggest wallet?

i think you are being bullied.

if push comes to shove close the current program and replace it with a porn site.

the redirect you have in place looks to me like they have no grounds to stand on.

in australia i think its called "passing off" where you pretend to be another business, but as you have so many categories on your jewellery shop they are simply taking the P%SS.

both their sites the .com and .com.au look like crap and its interesting why the .com is not ecom but the .au is?

i wonder if this all is coming from the AU person, maybe they bought the "franchise" or something???

if this was me i would find the AU persons phone number and pick up the phone and have a conversation, if that didn't work i'd phone usa and try to sort it out. document everything as you can use it later, nothing better then stating " i tried on many times to mediate this before it came official " when you are submiting your arguement.

tim

 

[Cooper Mills DomainLawyer]

If your domain is registered with an Australian registrar and hosted in of Australia, it is the Australian Copyright Act which applies - the DMCA does not apply. Our Copyright Act has a take down process as well, which is the relevant one here.

Best not to talk tactics in the open forum.

 

[payattention]

You'd be having a field day with all the pandora drops today shags!