Someone Using my Trademarked Site in the UK?

[justsomeguy]

What is the name of your state (only U.S. law)? TX

My companies name was trademarked in 2004 for the U.S. (I was in California at the time). I operate an e-commerce site.

Someone in the UK has created a site similiar to mine selling similar items and instead of using

mydomain.com they used my-domain.com they added the -

Anyway, I know I'm covered here in the U.S. and weve shut people down in the states, but overseas, do we have any leverage or ability to threaten them to change their name?

I'm going to call my TM attorney if I need to but usually he just tells me to write a letter and mention I'm represented by him, that works every time so I don't call him but this time I'm not sure?

[Stevef]

Originally Posted by justsomeguy

What is the name of your state (only U.S. law)? TX

My companies name was trademarked in 2004 for the U.S. (I was in California at the time). I operate an e-commerce site.

Someone in the UK has created a site similiar to mine selling similar items and instead of using

mydomain.com they used my-domain.com they added the -

Anyway, I know I'm covered here in the U.S. and weve shut people down in the states, but overseas, do we have any leverage or ability to threaten them to change their name?

I'm going to call my TM attorney if I need to but usually he just tells me to write a letter and mention I'm represented by him, that works every time so I don't call him but this time I'm not sure?

You have a good chance, because the .COM Top Level Domain is in the US. Here's a similar situation. (google in-rem domain name)

[url=http://www.circleid.com/posts/when_the_defendant_is_a_domain_name_the_power_of_in_rem_proceedings_under_t/]When the Defendant is a Domain Name: The Power of In Rem Proceedings Under the ACPA[/url]

"In June of 2003, Junak Kwon registered the domain name nbcuniversal.com through a registrar in Korea. NBC Universal, Inc. filed suit in the U.S. District Court for the Eastern District of Virginia the district in which the registry for the .COM TLD is located to recover the domain name."