|Trademark Domain Name being squatted on|
The owner asking 50k for our trademark domain
|Dabu The Dragon|
I have a client whose domain is like 'IBM.com', in which IBM is a trademark. Well, there is someone who is squatting a parked 'IBM.org' and they are asking 50k for it.
Is there a strategy I should use in my attempt to acquire this domain without paying 50k?
Not being a lawyer myself, I think there is no simpel answer - I think it will depend on how unusual the domain is; eg. is widget in widget.org a common word or is it used only by your (registered) brand? If it is the former, I think chances are bad you will get it.
See for example "Walkman" - which was once a Sony brand, until it became a vernacular, common term and Sony lost all chances to retain its copyright on it. Which is probably why Google fights the use of the verb "to google something" :D
If somebody else than Google were to register Google.org today, I think it would take milliseconds to retain it for free - not if it were to become a common term.
Dabu, without knowing far more, it's difficult to advise. I'd say a) discuss the issue with a trademark lawyer; b) file a WIPO/NAF proceeding; or, c) offer what makes sense and then move on.
Here's the language of the Domain Forum Charter that addresses trademark issue threads:
TRADEMARKS AND LEGAL ADVICE:
- Posting domain name details is a violation of the Charter of this forum, yet, such details are what competent legal counsel would insist on knowing before offering advice.
- There are hundreds of jurisdictions, each with their own variation of intellectual property and trademark law.
- Statements made in public forums can and will be used against their maker.
- Trademark holders can search domain forums for threads triggered by their communications. Declaring "I was just contacted by a lawyer about a domain . . " can signal "This thread was started by the person you just called." See #3.
- Money judgments for cybersquatting, trademark violations and other intellectual property wrongs can bankrupt people and companies.
- Threads that involve personal legal or trademark issues inevitably lead to the same conclusion: "We are neither qualified nor sufficiently informed to offer competent legal advice. Talk to a lawyer".
For these and other good reasons, from this point forward [webmasterworld.com], the Domain Forum will no longer host threads related to any individual's or any company's domain trademark issues. The only place to seek opinions concerning specific legal matters, such as the ability of any party to assert trademark rights or defend against such a claim, is a law office in the proper jurisdiction.
Generalized discussions about legal issues not specific to a member's circumstances, discussions about finding or using authoritative government sources (USPTO.gov, Patent.gov.uk, WIPO, etc.), or discussions concerning significant WIPO, ICANN or court decision are proper material for discussion.
If someone posts a legal issue thread, wherein they state that they have been contacted by legal counsel for "the other side" the only advice that should be given is to strongly encourage the person to stop posting details in public forums and to immediately seek a private consultation with a lawyer.
There is a really nice thread with some very good TM advice
For a while it was a sticky thread and that saved a lot of people asking TM questions like yours which pushed the rules of the forum so it may be worth a read.
I just discovered the same thing with a trademarked name of ours. I contacted the hosting company if they are using it as a website name and filed a request to take the site down.
I then contacted the owner and gave hime 2 choices
1-I am willing to pay you 100.00 for the domain to cover your troubles and
2-If not I will get an attorney and seek damages as well as the domain. I will give you 24 hours to respond before I seek legal advice.
He put the domain up to bid I bought it for 100.00 and that is that. With a trademark you have legal means to go after the name as they are breaking Federal laws in the US and can be held accountable.
You would probably have more luck if this is a registered trademark.
I would do as bwnbwn pointed out. Detail the violation, make a small offer, contact a lawyer that will do one of these WIPO/ICANN dispute processes. I have no idea but it seems like it would not cost more than a thousand or two.
|With a trademark you have legal means to go after the name as they are breaking Federal laws |
Possibly, but not necessarily. A great deal would depend on what they were doing with the term in question. A trademark is valid for a range of activity within a specified sector, but not necessarily for every possibility in the universe.
The only answer here is to talk with a trademark lawyer who can examine the details of the case.