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Domain Names Forum

    
Trademarked Domain Name and selling?
I own a domain and someone else owns TM
creativepart




msg:683699
 7:36 pm on Feb 6, 2006 (gmt 0)

I own what I think is a valuable domain name. I've owned it for years. BUT, the word that makes up the domain name is trademarked by someone else -- a large corporation that is very name recognizable.

This corp has never owned the domain name, when the internet first got started a company in Canada registered it and used it for a while. Then they transferred it to me when they were no longer using it.

I know that it is valuable to the large corporation as it is the name of one of their major products. They own the domain names of ALL of their other products. This is the only product name that they don't own a domain of.

I have had some limited contact with the corporation but they have NEVER discussed the domain name in any of these emails. I run a non-commercial website and they support me with free products to raise contributions with.

I use the domain name in the operation of a large website. However, the website has two domain names and this trademarked domain name is used by less than 20% of the people that visit my website. So, I could sell the trademarked domain and not really hurt my main website (which enjoys a number one google rating in it's field).

I'm thinking I'd like to see what the market is for this domain name, the trademarked one, and it is a name that would be of great interest to many other companies besides the large corp. that owns the trademark.

I'd like some advice about what would be the best steps to proceed?

1. Should I contact the Corp that owns the trademark?
2. Should I hire a broker to contact the corp?
3. Should I put the domain up for sale without contacting the corp that owns the trademark?

Or, should I proceed some other way?

Thanks in advance for the advice.
Paul

 

walkman




msg:683700
 7:50 pm on Feb 6, 2006 (gmt 0)

>> Or, should I proceed some other way?

I vote for not doing anything, as the corporation can take your name away any time they want to; practically it's theirs. They'd be stupid to pay anything...

buckworks




msg:683701
 8:03 pm on Feb 6, 2006 (gmt 0)

Was the trademark already registered when the domain was registered? Or was the domain registered first?

That could make a major difference in how you should proceed.

creativepart




msg:683702
 8:21 pm on Feb 6, 2006 (gmt 0)

The trademark for this product was established 40 or more years ago. It's amazing that the corporation doesn't own this domain name. People ask me all the time how I ended up with it... and I just sent an email to the company in Canada -- the company was in another industry but was named the same as the trademarked product -- and asked them if I could have it. They had been sold to a new company and were no longer using that domain name.

My website is a non-commercial Forum and it does drive sales to the corporation. I have over 1 million hits per month with nearly 10 million unique visits.

My website is 100% based on this corporation's product. And I have trademark disclosures on the site because of this.

As I said, the senior managers of the corp have limited email contact with me and have never even mentioned that I own the domain of one of their trademarks.

From reading here It seems that I should never contact the corporation about buying the domain.

Paul
PS. It is an international corporation with worldwide name recognition. Sales are probably in the $500 million a year range. They used to be owned by the CBS Corporation but are now privately owned by a group of managers.

davezan




msg:683703
 9:39 pm on Feb 6, 2006 (gmt 0)

Ditto what walkman said: don't do anything. Let them make the first move, then take it from there.

It won't be surprising if the company decides to become aggressive towards you, especially since you let them know about it.

stu2




msg:683704
 1:18 am on Feb 7, 2006 (gmt 0)

Because they owned the trademark first before the domain was registered, if you try to sell it you'll be cybersquatting. You may be cybersquatting already if you are making money from your website with their trademark. Best policy is to do nothing and hope they don't try to take the domain from you, which they'd be entitled to do. Hopefully, because they know you already, and maybe they don't have any pinhead lawyers, they might offer to buy it from you, but you should under no circumstances try to sell it, coz you'll risk a lawsuit. Simply keep using the domain as you've always done and keep your head down.

One mitigating thought tho. If they've given you permission to use the domain, then they will probably not win a wipo action against you. Preferable an expressed permission, but implied permission might help. Get your documentation together.

I'm not a lawyer. You should consult a lawyer rather than take any of my observations as advice.

ThePaul




msg:683705
 6:34 pm on Feb 21, 2006 (gmt 0)

I wonder if your domain was <snip> would <snip> take more notice? ;-)

[edited by: Webwork at 6:44 pm (utc) on Feb. 21, 2006]
[edit reason] Charter [webmasterworld.com] [/edit]

mike schmitz




msg:683706
 8:18 pm on Feb 21, 2006 (gmt 0)

If they find it valuable, they will contact you.

Contacting them does nothing other than making it quite clear that the domain you have is linked to their business or trademark.

wmuser




msg:683707
 11:28 pm on Feb 22, 2006 (gmt 0)

Teh best way woudl be doing nothing at this stage
Check out if they have regsitered the trademark earlier than you have regsitered your trademark?
If the domain name was regsitered earlier that it would eb very hard for them to proove the "bad faith"

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