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Domain can be 'taken' legally?

A domain lawyer advises that this is legal if domain not being used.

     
3:47 pm on Sep 25, 2006 (gmt 0)

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Whilst speaking with a specialist domain name lawyer, they advised that even if a trademark was registered way after the date a domain name (same as the trademark) was first registered, the trademark owner can still take your domain name away from you in the event that you are not using it with an active web site or are using it in "bad faith".

I understand the basis for bad faith (as defined by ICANN) when using a domain name in this way, but can a domain name be taken away from you just because you are not using it?

I don't doubt the sincerity of the lawyer's statement, but are they right and does anyone have any experience of such a situation?

4:11 pm on Sept 25, 2006 (gmt 0)

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What does he mean by 'taken away'?

Even if you go through the resolution service that costs around $2000 just to get seen to, then they would resolve a price for you to pay for it on top .. then if that is not working you have to go by other legal means... that's the part where you'd pay this so called expert lawyer...

And even then 'not using it' is not a strong case, in fact personally I'd say you have more chance of swimming the English Channel...

So if this person is not using it and you want it, negotiate, you're in business for godsake.. do some business..

[edited by: Lobo at 4:12 pm (utc) on Sep. 25, 2006]

4:41 pm on Sept 25, 2006 (gmt 0)

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And, how do you define "not using it"?

There are more uses for a domain name than just web sites!

What if it's just used for DNS? Or FTP? Or eMail?

Personally, I'm not sure I would trust the judgment of anyone who thinks putting up a web site is the only way of using a domain name.

5:07 pm on Sept 25, 2006 (gmt 0)

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Domain use is simply one factor amongst many to be considered when there is a trademark challenge. One man's parking page is that same man's "website". Read WIPO and the National Arb Forum's decisions if you really want to build up your knowledge. They speak to the parking issue from time to time. (Actually quite often.)

When it happens and it's news - that parking alone is determinative of anything - then we'll open up the discussion and debate about "unused domains".

Until then I'm leaning towards nuking future "(can) your domain can be taken because it's unused/parked" threads - as such threads can easily be viewed as a form of domain forum trolling.

5:58 pm on Sept 25, 2006 (gmt 0)

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I think I need to clarify a couple of things.

The domain name(s) that are not being "used" "as active websites", as the lawyer defines them, are registered to me. The lawyer said that someone could register a trademark at anytime after the domain name was created and then claim the domain name from me.

However, the lawyer also said that in order to establish a claim on a trademark, the person or company would have to clearly demonstrate, amongst other regulatory requirements, that they had a genuine business/product etc. with which they were claiming the trademark on. The lawyer said that registering a trademark "just like that" (with a hidden motive to claim a domain name), would not be permitted.

I would also like to state that I have no ulterior motive for this post, and I am not "using" this forum for the purposes of "trolling", (what's that?)

6:11 pm on Sept 25, 2006 (gmt 0)

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Until then I'm leaning towards nuking future "(can) your domain can be taken because it's unused/parked" threads - as such threads can easily be viewed as a form of domain forum trolling.

I'd suggest a [white]FAQ or library entry on "How you could lose your domain name"[/white] but I don't want to volunteer to write it, so I'll keep quiet.

7:38 am on Sept 26, 2006 (gmt 0)

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Ditto what WebWork said. One seasoned attorney has, time and again, emphasized that disputes like these are fact-intensive.

The domain name not being actively "used" is a factor not solely justifiable enough to take it away from its registrant. It depends on any and all details gathered and presented should a dispute occur.

I can understand, though, why that attorney the OP is referring to stated that. A vast number of registrants out there don't even know this reality can happen to them.

4:48 pm on Oct 10, 2006 (gmt 0)

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There is a domain name I want to obtain but it was registered privately. The registrar has a way for me to email the owner through them, but the owner has not replied to my inquiries. I don't care to use a legal means of taking away the domain name from the owner if I can avoid it, and from the sound of this thread, such means may not be very effective. The domain is currently not used for a website. I have not been able to determine if it's used for any other purpose. Any suggestions about how to contact the owner or how to get the registrar to release the owner's contact info to me?
8:28 pm on Oct 10, 2006 (gmt 0)

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Even if you have just parked your domain name and didnt setup a real website your lawyer potentialy can proove that the name is active
You will find a lot of cases on WIPO where the parked domain names has not been considred as a "bad faith"
4:38 am on Oct 11, 2006 (gmt 0)

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The registrar has a way for me to email the owner through them, but the owner has not replied to my inquiries.

Then he may not be interested in selling the domain name.

Any suggestions about how to contact the owner or how to get the registrar to release the owner's contact info to me?

Kick yourself for not thinking to register the domain name before the other guy did and move along.

5:32 am on Oct 11, 2006 (gmt 0)

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Right - I think the legal basis is that the cybersquatting act is retroactive, meaning that you can't sit on a domain that interferes with a trademark regardless of when it was filed or how you aquired the domain. I just had to give up a domain to AOL for a name they'd aquired. Exception: you are using the domain reasonably in a non-competitive way with the trademark holder.
3:13 pm on Oct 11, 2006 (gmt 0)

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ccDan, it's possible he's not interested in selling. It's also possible he hasn't received my inquiries. Is there a way to find out which of these two might be the case?
3:34 pm on Oct 11, 2006 (gmt 0)

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Jeff Willden, this will just be a shot in the dark. However, you can try and send an email to contact(at)domain.com and see if he has a catch all email set up.

Or, maybe try a few other basic email addresses at domain.com and see if he responds.

5:25 pm on Oct 11, 2006 (gmt 0)

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I have a .com domain, a completely made up word, that I registered cause I liked the sound of the word and because I had an idea for a business. Some time after registering the name (I think 6-8 months), a company with a different name contacted me expressing an interest in buying the domain. They were going to repackage/relaunch a product with a new name and had come up with the exact same name for their product as the name I had registered (exclduing the .com at the end)

We could not agree on a price and they left the matter at that. They subsequently bought the .net version and they appear to be doing fine with that. This all happened some years ago and they have not contacted me since.

Doing G and other searches produces results that are almost entirely for this company's product, with their home page at the top. My site is way down the results list.

I have subsequently dropped the business idea that I had originally bought the name for. I then chose to park the name with a parking provider and so I do not trade or take any direct custom etc. But, and this is the but, because of the uniqueness of the domain, it is highly unlikely that any visitor to my domain will be seeking anything other that the business product that I talked about above. Therefore, I have setup keywords for that company's product and this earns me some PPC money.

Over the years, I have received quite a few buying enquiries, but although I don't always respond, the offers that do come are WAY short of what I am earning just for parking revenue, so I have never sold it.

I am doing something illegal/wrong/immoral and should put myself in the stocks for this or should I just carry on like this until....?

7:20 pm on Oct 11, 2006 (gmt 0)

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joeduck - i don't know the facts of your case, but under the cybersquatting law you cannot be made to give up a domain you are not using (including no parking page) even if someone else holds a trademark on the words in your domain.

That is unless you are holding/using the domain in bad faith. Bad faith can include offering to sell the domain to the tm holder.

9:37 pm on Oct 11, 2006 (gmt 0)

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ccDan, it's possible he's not interested in selling. It's also possible he hasn't received my inquiries. Is there a way to find out which of these two might be the case?

If I were interested in selling a domain, I wouldn't make it difficult to contact me. Even if I wasn't interested in selling a domain, if I had any wild thought that someone may come along and offer me $1,000,000 (at which price a number of domains I am not interested in selling would sell), I would still not make it difficult to reach me.

Try guessing addresses, as another poster suggested. Short of that, I would focus my attention on finding an alternative name.

6:28 am on Oct 12, 2006 (gmt 0)

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Any suggestions about how to contact the owner or how to get the registrar to release the owner's contact info to me?

How about the phone or snail mail?

I'll sound harsh, but it's absurd to "get the registrar to release the owner's contact info to me". They have zero obligations to you.

I wonder where you got that idea. You wouldn't want your registrar giving your actual contact details to a 3rd party asking for it nicely, do you?