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Domain Names Forum

    
Trademark Holder VS Domain Owner
dailypress




msg:4317285
 5:20 am on May 25, 2011 (gmt 0)

I own a Trademark that's a common word. (filed as Class 1A)
Can I claim the .com version of it?

The domain has been parked for years and was registered in 1995 by a popular domainer. The name is currently listed on Sedo and minimum bid = $10,000. However, reading several blogs of his, I don't think the owner will sell the name for less than $500K.

I currently own the name using another TLD. What are my options?

 

buckworks




msg:4317295
 6:09 am on May 25, 2011 (gmt 0)

What year did you trademark the word to use for your business?

Which country (or countries) did you trademark it in?

incrediBILL




msg:4317298
 6:39 am on May 25, 2011 (gmt 0)

See if this answers your questions:
[iplegal.com...]
5. Federal Trademark law generally provides that if someone is the first to use a trademark (or service mark) in "interstate commerce" (that congress regulates), (a "first use in commerce") they may register the trademark as their exclusive property.

* Use, not only registration, gives one the right to stop others from infringing,
* Registration secures the ownership. Registration puts it on the record that the "applicant" is the exclusive user. If later, a person registers his "domain name" with one of the domain name registers, he is using that name in interstate commerce. If the "first user" wishes to they could sue the conflicting domain name owner in federal court. This does not "mesh" well with the policies of service providers on the WWW who want free access to names to please their clients, however that is the state of the law. It is also one of the gray areas.
* Don't forget: a domain name is an address. See the article on Trademark Law Basics.

dailypress




msg:4317328
 9:05 am on May 25, 2011 (gmt 0)

What year did you trademark the word to use for your business?
Which country (or countries) did you trademark it in?
Filed end of 2007 in the US. It took several months to complete.

If the "first user" wishes to they could sue the conflicting domain name owner in federal court.
I created my first site using another TLD in 2008.
IanTurner




msg:4317350
 10:25 am on May 25, 2011 (gmt 0)

If the domain owner is not in the same country as the Trademark registration it is extremely unlikely that you will get anywhere.

If the domain owner is in the same country you may have a chance but the best advice is to consult a lawyer to see if they think you have any chance. (Choose your lawyer carefully as many are out of touch with things that relate to the Internet.)

dailypress




msg:4317362
 11:36 am on May 25, 2011 (gmt 0)

If the domain owner is in the same country you may have a chance
Yes, he lives in the US.
Webwork




msg:4317386
 1:14 pm on May 25, 2011 (gmt 0)

Attempts to secure rights of exclusive use to words in common usage, such as generic descriptors, usually fail - if not "in the first round" (at trademark office) then in the second (in court).

If the domain realistically is worth $500K chances are that you will have to do battle in court.

Also, it's one thing to secure a trademark involving a generic/descriptive "word" or phrase. It's another to say that a domain, that contains that word/phrase, violates that mark when the domain can be used in a variety of settings. For example, Money.com. Magazine? Bank? Payday loans? Cash advances? Website about money management?

There are plenty of UDRP decisions that cover the limits of claims against generic descriptive domains. Generally, if the domain is generic and descriptive - AND the domain holder isn't attempting to trade-off against one well known application of "that word/phrase to a trademark" - the domain holder will win, either at the hearing (if well represented) or in court.

buckworks




msg:4317438
 3:01 pm on May 25, 2011 (gmt 0)

[common word] was registered in 1995 by a popular domainer


[trademark] Filed end of 2007 in the US.


Do the math. You registered a common word as your business trademark a dozen years after someone else registered the word as the dot-com domain. Where's the case here ... ?

Stay out of court and use your resources to make an offer for the domain. Remember that the domain is only worth $500K if someone out there is actually willing and able to pay that. So have the courage to offer less. Do some more math to figure out what the premium domain might be worth to your business, then make an offer accordingly.

Or else just continue with the status quo.

dailypress




msg:4317550
 6:32 pm on May 25, 2011 (gmt 0)

Attempts to secure rights of exclusive use to words in common usage, such as generic descriptors, usually fail - if not "in the first round" (at trademark office) then in the second (in court)
Yes, my application got rejected the first time but I was able to secure the name the second round [without a lawyer] :)

You registered a common word as your business trademark a dozen years after someone else registered the word as the dot-com domain
I agree, hence the reason why I haven't approached him. It wouldn't be fair, but I was still wondering about my options.
walkman




msg:4322721
 4:28 am on Jun 7, 2011 (gmt 0)

Frankly what you're trying to do is steal a very valuable name. Given the dates, you will almost certainly fail and you might find out that your trademark is not worth jack either.

StoutFiles




msg:4322724
 4:53 am on Jun 7, 2011 (gmt 0)

Unless the domain owner is trying to pass himself off as having something to do with your company, you have zero chance of getting this domain. Those dates are just way too far apart.

dailypress




msg:4323061
 6:01 pm on Jun 7, 2011 (gmt 0)

Frankly what you're trying to do is steal a very valuable name.
As I mentioned the line above your comment:
I agree, hence the reason why I haven't approached him. It wouldn't be fair, but I was still wondering about my options

your trademark is not worth jack either
I disagree but don't find the need to explain why either.
davezan




msg:4323258
 1:48 am on Jun 8, 2011 (gmt 0)

Besides, a trademark is meant to give protection against confusion, not grant some kind
of absolute, exclusive use over any and all variations of the mark. Not that that stopped
anyone from believing otherwise and still proceeding, albeit (as Webwork said) numerous
administrative and some legal decisions have decided against such attempts.

If this is especially for a business, surely you'd eventually make that 500K or more back
after "investing" in buying that domain name instead?

David

walkman




msg:4323260
 2:02 am on Jun 8, 2011 (gmt 0)

I agree, hence the reason why I haven't approached him. It wouldn't be fair, but I was still wondering about my options

We can discuss and debate 'fair' vs 'do I have a chance' / 'unlikely to get it' all day. But let's skip it, since the owner will most likely take it to court. You may also want to read the Hotels.com decision on trademarks and what it means for generic ones [google.com...]

Basically if you managed to squeeze one pas the USPTO I wouldn't push your luck. And even legitimate trademarks don't mean that you have a monopoly on that word on all fields, short of having invented ones like Google, Exxon, Verizon and the likes as a name. If I had Apple.com and genuinely talked about apples (the fruit) there, Apple Computers would simply be out of luck. If I owned a apple orchard farm it would be even better.

By the way, just last week Viking Office products tried to get Viking.org and lost badly. It was found to be a reverse hijacking finding.

I once got a cease and desist from a scumbag for a very generic word. But I never heard from him again after threatening to file for cancellation of his should-have-never-been-issued 'trademark.'

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