Domains and trademarks
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In the purchase of cialis.co.uk by an independent client of ours, Lilly Icos the trademark owner of cialis immediately made contact requesting the domain be handed over… initially our client had bought the domain hoping to use it for marketing purposes as they run one of the UK’s largest online pharmacy’s selling cialis, amongst other medicines.
We discussed various options with them including the idea of handing (selling) the domain over to a family who had the surname cialis (there had been some press about this family being upset by their surname being given to an erectile dysfunction drug).
Another idea was to use the domain to write a history of the cialis family and the impotence drug together- to justify retaining ownership versus the trademark and not handing it back to Lilly Icos.
As with all trademarks there are grey areas where ownership rights may not be as clear cut as you might think- our client, ukmedix, took specialist legal advice from Charles Russell and decided it best to hand over the domain to Lilly Icos and avoid a lengthy legal tangle with a manufacturer it needs.
Trademark ownership can be tested and there may be some creative ways to challenge the Trademark owner- but more often then not the Goliath and not the David comes out on top- sometimes out of necessity to maintain relationships (as with the case above) and sometimes out of sheer financial clout.
Even domain mispellings and proven copycat techniques that play on a trademark can land you in the soup as was the case with zuccarini- although this is usually too hard to prove.
Landing a great domain in your market can be very lucrative and holding onto it well worth your while, just keep your eyes open as the big boys are protecting their interests now.
For further reading on trademarking try looking at the Lanham act (its US based but covers the topic well).