Legal issues with brand names

[Lori99]

I have just encountered an issue with a client of mine who is in the process of building a new site for one of their brand name products. Star Threads. They just realized they forgot to purchase the domain name. Someone else beat them to the punch and starthreads.com is unavailable. What is the legal issues that I have on my back to be able to regain this domain name in my clients favor?

I have already contacted the current owner of the domain name. She just started her business and has not put up a web site yet. She is leary about selling it to us.

Thanks for your input and advice, Its greatly appreciated.

[bhartzer]

That's a great question, Lori99.

The bottom line is that if your client owns the trademark of that name they can force the current domain owner to turn over the domain to them. There are some anti-cybersquatting laws out there that make it possible for trademark owners to get their domains back.

iCANN has a UDRP policy and process that I believe costs $1500 to go through:
http://www.icann.org/udrp/udrp.htm

Again, if you own the trademark it's an open and shut case. If you don't own the trademark, then there's it's a little more difficult. But, if you can prove that you should have the domain and the other party shouldn't, then that's what that policy is for.

Another way to deal with it is to have your client send out a cease and desist letter from their attorney telling the domain owner to turn the domain over to them or they will have to take further action--which usually would involve going through the UDRP.

[Lori99]

I will have to suggest the letter from attorney to my client.

I did on the other hand find out that my client has 'Star' trademarked as a brand of thread. But not 'Star Thread'. Would these be a problem or does this still leave the case open?

I have given the current owner a list of suggested domain names for her web site and actually offered to create a small 3 page web site for free upon the transfer of ownership of the domain name and she is still pondering it.

I guess if I dont hear back from her with approval for transfer, legal actions will have to be taken.