I decided to check the trademarks since this phrase has become more popular and I have been getting many offers. Apparently, in 2006 someone trademarked this phrase. Looking through my old emails, they actually contacted me about buying the name but I never responded. All my unused domains go to a common form page of mine that says the name is currently parked but "might" be for sale and to contact me if they're interested.
Anyway, from reading previous posts, I'm thinking I am safe from them trying to take the .com since I owned it before the trademark, but how can I now build a site based on this name if they have it trademarked? Will I always have to refer to the site/business as ExamplePerson.com instead of Example Person? I also want to try to pick up the .org, but can they now claim that I owe them that name if I get it after their trademark was registered?
I really like the name and it's very relevant to what I do, so I don't want to lose it, but I do want to avoid getting into a possible legal battle down the road.
If you'd built a site way back when, you'd be home and dry; now it's not so clear, but certainly not a straight lose situation.
I agree you need expert advice; but your problem underlines the standard advice these days:
owning an undeveloped domain is usually not enough; building a site can offer some defense (it establishes a genuine interest in the name, and can demonstrate first use). Owning the trademark usually trumps all.
NOTE: I'm not a lawyer, or indeed any form of rodent, etc., etc.
So, would buying the .org at this point be a flat out bad idea? Is there any obvious way that buying that name would jeopardize my ownership of the .com? I was just thinking since I owned the .com, it would not be seen as bad intentions, but without a published site I can see that it's harder to prove.
There's no question of any 'bad faith' accusations, as you have not yet been 'challenged' about ownership.
Provided the price isn't silly, you've little to lose and more to gain ... go for it!
And one other point: Talk about possible intentions in a legal situation on a public board might not be such a good idea. There's nothing to say that the other party isn't reading this thread or, say, if matt900 is part of your e-mail addy, can't track it down. Ya' never know who's listening ;-)
The previous contact only consisted of them sending an email through a mail form on my site. I only know now that they are the same person/people as the trademark because of the email address...there was no mention of trademarks or anything to that extent. I never did respond to the request either.
Thanks Quadrille, I just didn't want to ruin any possible chance of still being able to use the .com. I was hoping there was a more straight forward answer or a situation where someone else already set the precedent. :)
intentions are honorable
I think your best bet to get a sense of what's what might be to read through some of the WIPO decisions [wipo.int]. Boring, but at least you'll come away with some understanding of what factors are considered.
I was hoping there was a more straight forward answer or a situation where someone else already set the precedent.
That is possible; but so much of copyright and trademark law has just not been tested in court where the Internet is concerned. The key feature (I think!) in your case is that you owned the domain before the mark was registered. I strongly suspect that makes a straightforward answer pretty unlikely.
Good Luck!
I strongly suspect that makes a straightforward answer pretty unlikely.
TRADEMARKS AND LEGAL ADVICE:For many reasons public forums are not the place to disclose details of your personal legal issues, so don't.
Webmasters ought not be confused with lawyers. The only place to seek opinions concerning specific legal matters, such as the ability to assert trademark rights, is a law office. Please do not attempt to use the forum to vet your trademark issues. Our membership is not qualified and you are not authorized to post specific domain details, the type of details without which no one can realistically offer advice even if qualified to speak.
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.
Please do your best to respect the Charter, in both its terms and spirit. Even our most helpful posts may be counterproductive. Without a great deal more information and legal expertise our efforts to guide someone may be just plain wrong. No one should rely on the advice given in these circumstances.
but how can I now build a site based on this name if they have it trademarked?
If you're going to put any hint of commercial use, filter it in such a way that it
doesn't show ads of competing products of that trademark. Of course, it isn't
going to stop the other party from forcing the issue if they feel like it.
And yes, there have been few exceptional cases where the domain name that
was regged before a trademark existed was eventually taken.
David
PS Editing my post hoping it's still within the Charter. But feel free to edit. :P
Folks, in our effort to be helpful I think we've been moving a bit "over the line",
Unfortunately, when thread start posing questions such as
So, would buying the .org at this point be a flat out bad idea?
the crossing of the imaginery line becomes a bit more palpable. Posing and answering specific "strategic questions" - versus discussing general principals of trademark law, WIPO procedures and prior opinions, where to find public info about trademarks, etc. - makes the judgment call a bit easier. We really need to avoid specific legal questions and guidance. It's just not a service.
It would be easier to kill off the dialogue entirely, but I like to help people as much as possible. The posting of the "notice" (above) isn't a poke at you. I've only got appreciation for what you've been attempting to do - to help someone who needs it. The triggering event for the post was a second "I have a trademark issue, they have lawyers, tell me what to do" thread. I just don't want folks to get the idea that we are qualified to offer answers to specific legal issues. I posted the notice in this thread since the number of responses in this thread suggested that the next newcomer with a trademark question might read this post, first, before posing the next trademark question.
The good work, helping others, is appreciated callivert, Q, JB, et al.
I forgot about the WIPO decisions site. It's interesting to see how these things actually play out...and that it's not something to mess around with without legal advice. Some of the cases are just silly, though...it's amazing how many people try to get away with such blatant rip offs.
Since it doesn't seem to be a fact that owning the domain before a trademark, but not developing it before the trademark, guarantees future use of the name, then I have some serious research to do before proceeding. I was hoping to hear that it is a fact that I am in the clear, but hearing that I may not be is also just as helpful.
We're webmasters, not lawyers or trademark lawyers, so it's a risk-benefit situation where the benefits of helpful but inexperienced advice is likely exceeded by the risks of either making public statements or thinking that your personal hunches about the law have been confirmed.
I often wonder how we would do addressing issues of spinal surgery, nuclear physics, infectious disease, and the like. Seems easy enough to me. I have a spine, have been to the doctor, know more than a few people who've had surgery, . .
"Sure, sounds like you can keep playing soccer to me. That numbness you're feeling is likely to go away soon. It did for me."
A trademark violation lawsuit can dramatically alter someone's life and lifestyle, sometimes for years if not forever. It's not quite spinal surgery but - if all we're likely to "best advise" at the end of any thread is "Talk to a lawyer" - and - if a lawyer worth their fee is going to insist on the kind of disclosure that can never be made in a forum (in order to render a meaningful opinion) - then we're really far better off only discussing trademark issue in general. Never as they related to any one person's specific legal issues.
Still, we do try to help . . .
