Need some help!

[mike7800]

Hey everyone, I was doing some searching on the net on a certain problem I have and I thought maybe you guys could help me out or atleast point me in the right direction.

I realise you cannot give out legal advice but if you know anything about this situation any help is hugly appreciated.

Me and my partner have been running a website that sells cookware etc ( I omit the name of the company) for 10 years now.

Now we get a call from a guy who has been selling the same cookware from a .ca website of the same name. We have had our domain (.com) for much longer than he has.

Our problem is earlier this year he registered the name as a trademark and now hes telling us to give him our domain.

Hes thretaning legal action and I believe he could win as we are selling the same product and he owns the trademark now.

My question is this: Can he legally "force" us to take down the domain, could he force us just to take off the cookware product ( the only similarity besides the name) and If all else is yes could he force us to "give" him the domain?

We DO NOT wasnt to give it to him, as a last resort we will keep the domain and use it as a blogging site or something else.

He says we can pay him 100,000$ to keep the domain. He specifically told us he doesnt care about us using the name but he wants the .com and if we dont give it to him he will shut us down completly. If we are forced to shut down we certanly dont want to give him .com

This man is maliciously destroying our livelyhoods by doing this.

I appologise if im not being very clear, I appreciate any help you guys might be able to provide.

[dailypress]

I own a nice trademark but doubt I can ask the owner of MyTrademark.com to give his parked domain to me, or can I?

Im not sure how to answer your question but am interested to see what others have to say.

[mike7800]

Just so people know I am in canada so its a canadian company. We registered teh domain long before him but he snuck up and trademarked teh name ( dont know why it wasnt done by us years ago) sells teh same stuff as us and wants us to shut down...I feel so cheated...I understand that there is a possiblity that we will have to change things due to him beating us in teh punch for trademarking but we dont want to have to give the domain if we can help it.

[edited by: mike7800 at 6:19 pm (utc) on Apr 28, 2010]

[TheMadScientist]

Personally, I would consult an attorney, because it's my understanding you may have a 'pre-existing use' argument for the right to continue using the domain and selling the product, but I'm not personally an attorney, so officially I'll Schultz: I Know Nuthink!

DailyPress, you might try searching for some information regarding MDNH, Inc. and trademark infringement lawsuits to learn a bit more about your situation, because the answer, from what I've read and my understanding of the information seems to be: generally no, but maybe yes; depending on the exact situation.

[mike7800]

Thanks for the quick reply madscientist, Ill deffiently look into it, On further research I came across this. Its not referenced so I dont know how legitimate the information is butttt: Question: What is non-commercial use of a trademark? Is non-commercial use infringment of a trademark?

Answer: Non-commercial use of a trademark is generally that use which is not related to the sale of goods or services. If no funds are solicited or earned by using someone else's mark, this use is not normally infringement.

Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.

One example of non-commercial use is descriptive use (where the name is used to describe something, such as "He went to MacDonald's for lunch" or "She was wearing the MacDonald tartan.")



Would this mean that If we turn it into a blogging website or some other such non-profit/commercial site then are we in the clear?

[TheMadScientist]

In My Opinion: If you had to it would, but again I would definitely consult an attorney before doing anything or making any decisions. I would also show them the 'request' you were sent, because I think remember reading 'bullying' is a no, no...

[tangor]

There might be other issues in play as, apparently, your site and the other fellow's are selling THE SAME PRODUCT. So how can there be a trademark? I think what this fellow is attempting to assert is a Registered Mark, or Business Mark (in the US we call that a Business Name or Operating As). If that is the case then you probably have a very good chance of fighting this as you will have been "in business" longer than the other person.

Again, we can't give legal advice. You should consult an attorney.

[mike7800]

As we were both selling the same product under the same name but neither of us trademarked the name. He had example.ca and we had example.com ( not the actual names).

He registered teh name earlier this year without us knowing and now is claiming legal action because we are selling product with his trademark and we have the name in the URL. If we are forced to stop selling product under his name or even stop being a commercial site for that URL we atleast dont want him to get the URL.

I fully realise You cannot give legal advice and I am meeting with an attorney but your help and suggestions are pointing me in the right direction and giving me ideas to ask about so I do thank you for the time you are taking to help me.

He specifically said that he doesnt have a pension and he just wants teh money as hes 75, Hes willing to rent it to us for 2000$ a month..... Unfortunetly it was said verbally and not by correspondance so we dont have that proof of his bad intent.

If worse comes to worse and he shuts us down we at least want to spite him and make sure he doesnt get teh URL by using it in some other way

[TheMadScientist]

IMO You have a pre-existing TM and they're actually the one's infringing... To the best of my knowledge you have an implicit TM (in the US) whether you put a little TM next to your logo or not... Again, IMO, this could end up going the other way if you get a good attorney, because they should have had obvious knowledge you were already trading using the name, AFAIK it gets a bit sticky with domain names, because example.com can be a different TM than example as a company name, and I really haven't read enough on the issue to feel comfortable expanding much beyond there.

I'm sure you will, but just lay out the situation to the attorney you're speaking with and the chances are he (the attorney) is the one who's going to win if it gets sticky... Also, I believe there is a little venue issue, and I think they may actually travel to you if they would like to actually pursue the matter legally.

[dailypress]

... searching for some information regarding MDNH, Inc

Im not sure what Im supposed to do research in regards to this site? they dont own the .com I mentioned.

anyway, ill take a look into the trademark situation later this week. :)

[TheMadScientist]

I was meaning for more general information on the situation... They have been involved in a (large) number of infringement suits, because they're not a 'sqatter' they register 'generic terms' and present paid advertisements on those sites. IOW: They have been found to legally do what we refer to as squatting repeatedly and you can find a number of the cases, information and rulings just by searching, which should give you a good idea of the arguments they use and have had used against them.

[buckworks]

You need to consult with a knowledgeable attorney. Pronto!

When you go to talk with him/her, come equipped with all the evidence you can round up about your prior use of the name, including when the domain was registered and how you've been using the name in advertising, daily business activities, and so on.

Important to find out: did he register the trademark in the US or just in Canada?

Those are a few thoughts that come to mind ... but the most important advice is to consult a knowledgeable attorney.

I have to say it doesn't smell right that he would call you directly with such high-dollar demands, rather than having his own attorney do it.

[TheMadScientist]

Holy Cow! We've all forgotten:
Welcome to WebmasterWorld!

[tangor]

Point of clarification... is this domain name the same as the product (sans .com or .ca)? And you both sell the same product? If this is the case, doesn't the maker/supplier of the product already have trademark/businessmark for the product? And, have you not been in business with this domain name, with (tacit) permission of the maker/supplier of product for a time exceeding that of the other person?

These are just questions I would ask the attorney. And while I was at it, I'd have the attorney draw up a letter demanding the other party to cease and desist using your established internet business name.

Again... we can't give legal advice. But we can wish you well in dealing with this!

[buckworks]

Thank you for extending that welcome, Mad Scientist! :)

I own a nice trademark but doubt I can ask the owner of MyTrademark.com to give his parked domain to me, or can I?

DailyPress, depending on who registered what and when, in some circumstances you could indeed demand to have the domain turned over to you.

I was on the team as SEO consultant in a situation a few years ago where that exact thing happened. A certain person's name was properly trademarked for doing business in several countries but the dot-com of the name was in the hands of a squatter. His agents were astute business people in the brick-and-mortar world, but not web-savvy. By the time they thought about registering the dot-com, the squatter already had it. There was no real content on the domain, just a parked page full of ads.

My advice was to hold their noses and make the squatter an offer roughly comparable to what an ICANN appeal would cost. They tried to do that, but the squatter didn't respond to any communications. So we did a mountain of paperwork, went to ICANN, won the case easily, and the squatter ended up with nothing.

That would not be a precedent for the OP's situation though, because the timelines and prior use issues were very different.

[mike7800]

Wow thats a great amount of information! Thank you everyone, I have an appointment and I will be writing down alot of questions for him.

I was told something interesting though. He owns the trademark in canada... so we were told if we transfer the domain to say my aunt in Holland and its registered in her name its not under Canadian trademark jurisdiction ergo he cant touch it.

Its something else id have to ask the attourney but I think it would be pretty funny if it was as easy as that. We woudl still have to stop selling the product or atleast call it something else ( the product is custom made and isnt copyrighted we just stamp the name on the side) and we could just forward that site to our new domain.

The .com thats being disputed has been either 1 or 2 on google for a few years now on our major keywords so the name is known and if people visit the site we would still like their business even if its under a different name. So if we can keep the domain up and running somehow we could just use it to forward to our new site so old customers can still find us if the law permits.

Thanks again for all the input everyone! Im pretty confident in the matter now.

[buckworks]

Good luck, and please let us know how it turns out!

[kaled]

You should probably investigate the process by which he registered the trademark. It's my guess, in order to do so, he will have lied. In this case, the trademark will be invalid and you may even be able to claim it off him. Also, the act of lying in such circumstances may constitute perjury, in which case, this guy could be looking at a criminal record (he's probably got one already) and possibly jail time (but that seems unlikely).

Even if he didn't lie, you could raise a complaint against the trademark office. There are strict rules about checking pre-existing use before a trademark can be granted and clearly, those rules have not been followed. Someone with a suspicious mind might even wonder if someone in the trademark office has an interest in this.

Kaled.

[piatkow]

You refer to "company" a couple of times. I don't know anything about Canadian law but if it is similar to this side of the Atlantic then "company" has technical meaning that you have incorporated rather than running a business as private individuals.

If the company name is the same as the domain name then I agree with Kaled, hopefully your lawyer will be hitting back with a counter claim.

[Dinkar]

Challange his trademark and ask $500K for tradmarking your name.