Internet-law: When I protect the domain 'made-in-switzerland.com' as a
brand name in the USA - must the current US owner (who does not use
it) then leave
it to us (as a swiss company selling swiss products). He wants to
lease it for $500 /mt which is too expensive.

---

Request for Question Clarification by leader-ga on 19 Jan 2004 12:25 PST

Hello subwave:

Do you want to say that the domain name 'made-in-switzerland.com' is
owned by a US owner who wants to lease it to you for $500/mt. So, you
may use it to sell your products.

Thanks.

---

Clarification of Question by subwave-ga on 19 Jan 2004 13:03 PST

yes - and no - because i do not want to post the real name here, I
took the similar 'made-in-switzerland.com' (which is owned by a swiss
company I guess).
The owner of the (real) domain is simply holding it to make the
bestpossible profit of it. He has nothing to do with Switzerland and
currently there is a bad Popup-Site running there(leading to porn
websites etc). I ask myself if it's not better to buy a trademark
which would give us the right to use the name.
The question is in contrary also : Could someone protect 'subwave' or
'subwave.com' or 'subwavecom' in the USA as a trademark today and take
our domain subwave.com away which is in our hands since 1997.
'subwave' is a trademark for Internet/design .. since 2000 but only in
Switzerland. What if we would have registered it only to sell it later
for a high sum?
Sorry my english but I hope you understand..

---

Clarification of Question by subwave-ga on 19 Jan 2004 13:20 PST

II - yes he offers that we can lease the domain, but 500$ a month is a
lot of money over the years and our onlineshop (concept, design.
programmation finsihed) must be very successful from beginning on ..
and we would never be sure if suddenly he sells it to someone else.
question is also : possible to make a trademark with such a general
sentence (would the 'com' in the name help?) and is there maybe still
a swiss federal institution who has the rights for the internet
domain? (that would be also a reason not to pay too much ..)

---

Request for Question Clarification by pafalafa-ga on 19 Jan 2004 13:28 PST

Subwave,

The situation you are dealing with is often referred to as
"cybersquatting".  While it may seem unethical to you, it is not
usually illegal.

However, if someone has clear intellectual property ownership of a
name or phrase -- for example, "Coca Cola" -- then other people
attempting to register a domain name that includes "coca cola" may
find themselves on the receiving end of a lot of letters from lawyers
threatening lawsuits.

The international nature of the web makes courtroom resolution of
these issues very complicated, from a legal standpoint.  However,
there are now standardized arbitration procedures for resolving
disputes that should be able to decide who has appropriate rights to a
phrase like "made-in-switzerland" (or whatever the real phrase is).

ICAAN -- the Internet Corporation for Assigned Names and Numbers -- is
the place to turn to, I believe.  Have you looked into their policies
on dispute resoultion?

In the US, a basic principle of tradeamrk law is "first in time is
first in right."  Thus, the person who is the first to use a trademark
in the US GENERALLY has better rights to the name in the US than
others who may adopt it or a confusingly similar name later.  This
generaly rule holds true with respect to domain names as well.  If you
are using a trademark in the US, wheterh or not that trademark is
registered, then you MAY be able to prevent someone from using that
trademark or a confusigly similar variant as a domain name.

So, let's assume you ahve been using the mark "Zorgon" in the US since
1990 as a tradeamrk for golf clubs.  In 2002, someone registers the
domain name "zorgon.com."  You want to get the domain name since you
have better rights based on priority of use.  You can either (a) fiel
a lawsuit agsinst the registrant based on tradeamrk infringement; (b)
file a lawsuit against the infringer based ont he US
Anticybersquatting Consuemr Protection Act; (c) bring an action in
front of a WIPO arbitrator under ICANN's Alternative Dispute
Resolution Policies as enacted by the registrar at which zorgon.com
was registered; or (d) negotiate directly with the registrant and try
to buy/lease the domain back.  Teh rpoblem is that these only work if
the domaon registrant is acting in "bad faith," i.e., has registeed
the domain in full awareness of your prior trademark rights ina n
effort to try to sell it back to you or some third aprty for a profit
OR if the registrant is using the domaon name to sell related prodcuts
like gold balls, golf clubs, shoes, etc.  if this guy just happened to
register zorgon.com becasue he liked the sound of it and he is using
it to sell small plastic relocias of dinosuars (or somehting else
completely unrelated to golf clubs), there may not be much you can do
except try to buy it back or lease it.

Let's assume different facts--let's assume the guy registered
zorgon.com BEFREO you began using "Zorgan" as a mark for golf clubs. 
i fyou subseuqnetly come to the US and begin using Zorgon for gold
clubs, the owenr of the domaon does not have to surrender the domaon
to you becasue he was using it forst and at the time he began to use
it int eh US you had no superior rights to the name.

Differnt facts again:  someone has been using "subwave" for a mark
since 1997.  They could perhaps succeed in getting subwave.com IF

It is not clear from your question if you havevalid trademark rights
in the US to the makr in question.

The preceding post from ipfan was in draft form and posted
prematurely--please disregard.