|Legal action for TradeMark|
| 8:46 pm on Apr 20, 2004 (gmt 0)|
I recently got an email saying two domain names I own are trademarked by an online casino company. They are saying that I can not own two of the names I registered because they are trademarked. I do not market them and right now they do not point to a web site at all. They pointed me to:
They also said:
Do I have to give up these domains? I own them and do not market them. Where should I look to figure this out.
[edited by: Woz at 2:10 am (utc) on April 21, 2004]
[edit reason] No Email excerpts please, see TOS#9 [/edit]
| 9:13 pm on Apr 20, 2004 (gmt 0)|
I would talk to a lawyer. Some legal services let you have a phone consultation for little or no cost.
You can probably check for yourself whether the names are indeed trademarked- beforehand..
| 9:50 pm on Apr 20, 2004 (gmt 0)|
I would ask yourself why you registered the domains and go from there. If you're planning to use them because they are similar to registered TMs, then you're looking for trouble. If you just happened to coincidentally register a domain that's the same as someone else's registered TM, then you're probably OK, though you still might want to talk to a lawyer.
TMs are classified in categories and not universal across all of commerce or all of life. If you're using the name FORD to market your cockroach killing service, The FORD Motor Company doesn't have a strong TM infringement case, because your use of FORD to squish bugs isn't likely to confuse any auto buyers.
| 10:03 pm on Apr 20, 2004 (gmt 0)|
Though what you stated is correct, WIPO will hand over a domain to any trademark owner that asks for it. The decision process is sickeningly in favor of existing TM holders, even when a registrant may have a legitimate intention to use in another class of goods of services.
It really is best to seek professional advice on this.
| 10:08 pm on Apr 20, 2004 (gmt 0)|
You can do a trademark search at the USPTO for details on what their exact trademarks are and for what use they have trademarked them. If your intended use is in a completely different arena you may be OK.
Sometimes trademark disputes aren't black and white. Some of criteria include first commercial use, how related the uses are by the different entities, and the possibility of confusion. Unfortunately, the comparative legal resources of the two combatants make a difference, too. A deep-pockets megafirm can outspend a small business by many multiples, and it's often easier to not fight.
If you think that your intended use is significantly different than the trademark holder, you might try consulting an intellectual property attorney familiar with domain disputes for an opinion. If you have no active sites and little invested here, though, it might be easiest to fork over the domains and move on to more profitable activities.
| 10:11 pm on Apr 20, 2004 (gmt 0)|
|Do I have to give up these domains? I own them and do not market them. Where should I look to figure this out. |
Whatever you do, DO NOT offer to sell the domains to the trademark holders without talking to a lawyer. If you do, they can be very easily yanked from you (for free).
Go talk to a lawyer, pronto.