Trademark infringement - how to tackle it

[j13]

Im advising a friends company on their site seo etc but there is also a trademark issue as laid out below:

Say for example, Im helping "Company A" who has had a trademark of "purple duck" in the exact class their products (for example hats) since 2004.

Now "Company X", incorporated in 2007, purchases purpleduck.com and starts selling hats from that site. Not hats that they make but hats nonetheless.


What would be the best way forward (bearing costs in mind)?

Won’t be popular for asking this but would a UDRP be out of the question as the trademark predates Company Xs ownership of the domain? (but not the domain itself....proved by whois archive)

Any help would really be appreciated,
Thanks in advance,
Chris

 

[accelerator]

Won’t be popular for asking this but would a UDRP be out of the question as the trademark predates Company Xs ownership of the domain? (but not the domain itself....proved by whois archive)

If you had a Trademark on the exact term before another party obtained a domain, and that party then infringed the trademark, that gives you a strong case.

Rgds

 

[anthony]

...Won’t be popular for asking this but would a UDRP be out of the question as the trademark predates Company Xs ownership of the domain? (but not the domain itself....proved by whois archive)...

Out of interest, what does the archive show the domain being previously used for, and does the domain name pre-date your friends' trademark?

 

[j13]

Thanks accelerator

Out of interest, what does the archive show the domain being previously used for, and does the domain name pre-date your friends' trademark?

yes it does, the domain was registered in 1997 an was previously a personal website belonging to someone in France. Would that make a difference if the domain was purchased by by the company after the trademark?

 

[accelerator]

yes it does, the domain was registered in 1997 an was previously a personal website belonging to someone in France. Would that make a difference if the domain was purchased by by the company after the trademark?

Personal website = OK, because the trademark didn't exist when domain was registered.

Company buying domain = Probably not OK, because the trademark then existed.

I only have knowledge of UK trademarks. If it's a .com you're talking about, then I guess US trademark law applies, and US trademarks are likely to be those relevant to the case.

Rgds