Trademark and Domain Names

domain ownership based on trademarks

[anawaz]

I am wondering if anyone here is familiar with what rights a company has to a domain name if it, say, copyrights or trademarks for that domain name or that name.

So, for instance, if we trademark 'widgets.com' as a brand, do we have legal right to getting the widgets.com domain name? If somebody else owns is and is simply parking it, does anyone know what would happen if we tried to get a court order and get the domain released, say, for a price under US $100.

As it's a .com domain, the TLD jurisdiction would theoretically be US (as ICANN is a US entity too, right?) and if we have a trademark in the US, do we get any kind of ownership rights?

Thanks!

[buckworks]

A lot would depend on the exact details of the situation, but as a general guideline don't expect that the mere fact of trademarking a word or phrase would create any special rights to a domain name that someone else had registered before the trademark existed.

If you want the domain, be prepared to negotiate with the owner to purchase it on the open market.

Consult with a knowledgeable trademark attorney to assess the specifics of your case.

[topr8]

registering a trademark is quite expensive, certainly a lot more than $100, why don't you just offer a sensible price for the domain?

[anawaz]

Thanks guys. Registering a trademark is not an issue for me. I've done several. Trouble with this dude is he wants $7000+ for the domain name and he's in Korea and doesn't speak much English. Negotiation is quite the challenge!

[kaled]

If you register both the trademark and a similar domain name and build a genuine business with both, the value of the domain name held by this Korean guy may fall - it depends how generic it is, etc.

The bottom line is
1) As things stand, you can't force this guy to sell but
2) If you start and run a genuine business, he can't then use his domain name deceptively (trying to leach off your business). If he tries to do so, you can initiate a UDRP complaint even though he registered first. Of course, it is not certain you would win, but it is likely.

If the domain name has been parked for some time, it is likely he has no intention of using it for a genuine business of his own. That just leaves the possibility that he might sell it to someone else in the near future - that could be a problem if the buyer has genuine plans for it.

Kaled.

[anawaz]

Thank you Kaled.

I am running a genuine business with the name and have been for several months, except we don't have the .com domain name. He's not using the name deceptively, it's been parked for a couple of years.

I am in the process of trademarking both in the US and the EU - I wonder if the .com is worth pitching for - I guess we shall see.

[Swanny007]

How many people might be interested in that domain name? If it's only a few, just tell the guy something to the effect of "Look, you're only going to have a few people ever interested in the domain, so my offer is $3,000, take it or leave it" and see where that goes?

In my experience having the .com is not the be-all and end-all, but it is handy to have. I'm guessing you're using something like the .net or .org now?

[kaled]

Before making another offer, I'd wait until the trademarks are granted (and maybe a while longer to make sure no challenges emerge - you probably know more about that than I do). You'll be in a stronger position then since you'll be able to point out that few other offers are likely to emerge. My guess is that at that point, if you offer $700 he might accept $1000 but obviously, you're in a much better position to make that judgement.

Kaled.

[HuskyPup]

I am running a genuine business with the name and have been for several months,

You've started a new business and didn't check to see if the domain name you needed was available or not?

Bad planning, lesson learned?

[anawaz]

LOL. Always someone around for a 'smarty pants' type comment. The business isn't based on the .com domain. It's based on another TLD which is part of the branding, etc. too - the .com will just be good to have but it will still not be used as the primary domain.

Think you jumped the gun slightly in teaching the lesson here, but I know your intention was correct. So, no, I did not make this blunder.

[HuskyPup]

It's based on another TLD which is part of the branding, etc.

Do I assume you're branding as examplenet.net and want examplenet.com?

If so then it's even more important to check name availability in advance since .com is, at the moment, the default for many type-in searchers etc and especially so in the USA.

It may not have seemed important when you first set-up the business but if someone else gets hold of that name and markets it successfully with an alternative product then your company name/branding may go up in smoke and count for very little and you could have wasted a lot of unneccessary expenditure.

[anawaz]

Hi Husky, yes, the branding is done that way.

I agree that .com is the most searched for domain, but we're selling to a very targeted market and a major part of the marketing message has been the emphasis on the .ws extension we're using, so in effect it's example.ws or example dot website.

I still don't see this as something very important, it's just a good to have. I have a friend who runs a $30 million company on a .us domain name because somebody else owns .com. It hasn't affected business per se, it's just something that's good to have, but he still doesn't want to spend the $60k for the .com the other guy wants and doesn't think it's enough hassle to go the trademark infringement route.

Re someone else using an alternative product with the .com domain, that is the whole idea behind trademarking - if they did, they would be infringing and we could get them shut down relatively quickly even if we don't get posession of the .com domain.

[HuskyPup]

that is the whole idea behind trademarking

Hmmm...but your problem is that the .com owner is in another jusrisdiction altogether and my guess would be that if they used it you may not have a leg to stand on...you need some really good legal advice and we can't give that here for obvious reasons.

$7k is a lot for a generic or made-up name IMHO.

[anawaz]

Agreed, he may be in a different jurisdiction, but become .com domains are ultimately controlled by Network Solutions and ICANN, his jurisdiction, be it Korea or China, would become irrelevant. If it came down to administer and implement our right to a .com domain, we would file suit in a US court whose jurisdiction covers both ICANN and Network Solutions and the idea would be to get a court order to ask them to take down the website until a trial which can then decide who should actually get the domain.

Of course, if in a few months the business ends up where I want it to be, I don't mind paying $5k or $7k for the domain.

I do need legal advice, but because .com searches on the search engine are not the highest priority, this issue is not the most important one.

[HuskyPup]

You definitely do need experienced legal advice since it is very doubtful that you would be awarded a parked domain name simply because you now have a trademark.

It simply doesn't work like that and I have been through this myself when a US company tried to claim a trademarked .com from me however I had been using it for at least a couple of years for my purposes and they backed down when I said I would not be using it for trading in the USA.

Funny thing is that I actually sold it to them last year for a nominal price which I had promised them I would do if I ever decided to stop using it.