Domain ownership before company trademark

[lisalosa]

I own a domain name prior to a very large corporation's trademark registration of this particular word. For example, if the domain name is word.com, the company recently registered Word as a trademark. This is a huge company in the entertainment industry. I am interested in selling it. Do I approach them, sell on EBay, or what? Thank you!

[Shak]

do NOT approach them or put it up for sale

instead put some GENUINE content up and maybe have a link for contact me/us purposes so they can make initial contact with you.

also if you think it could be a big $$$, then use a professional domain negotiator

and finally, good luck

Shak

[davezan]

[arb-forum.com...]

Complainant alleges that Respondent engaged in bad faith because Respondent registered the <hood.com> domain name with the intent to resell them. As noted above in the legitimate interest section, the mere offer for sale of a descriptive term domain name does not establish bad faith under the Policy but, rather, may be taken as proof of Respondent’s legitimate interest. It is only the registration with the “purpose of selling ... the domain name registration to Complainant” that establishes bad faith under the Policy.

[edit_g]

As noted above in the legitimate interest section, the mere offer for sale of a descriptive term domain name does not establish bad faith under the Policy but, rather, may be taken as proof of Respondent’s legitimate interest. It is only the registration with the “purpose of selling ... the domain name registration to Complainant” that establishes bad faith under the Policy.

I'm fairly sure a good IP lawyer would make short work of that...

[lisalosa]

Thanks everyone for the comments thus far. What makes this interesting is it's a word that never existed before, say, 2 years ago. Basically, a new word that entered into the English language very recently. (Sort of a hobby of mine). It does pertain to what I do for fun so I thought I'd use it as a vanity site or something. Then BAM! suddenly I see it everywhere. It just turns out that this particular company is using the word for their own entertainment purposes now.

[adfree]

>>then use a professional domain negotiator

Any hint of such, experience?

[eurotrash]

Respondent's Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name.

(i) The Panel concludes that Respondent has successfully rebutted this contention. Respondent has shown that, before any notice to him of the dispute, he had used the domain name in connection with the bona fide offering of his services to a substantial range of customers in the United States of America and elsewhere. Respondent has provided cogent and corroborated reasons for his adoption of the domain name and of his continued use of it in the bona fide conduct of his business. The Policy does not aim to adjudicate between genuine conflicting interests. The Policy modifies the Justinian principle of "qui prior est tempore, potior est iure" – "first in time, first in right" - only where there is clear and unjustifiable misappropriation of Complainant's mark.

(ii) The Panel therefore finds that Respondent has established his claim to rights and legitimate interests in the domain name.

Use and Registration in Bad Faith

In the light of the Panel's finding in relation to paragraph 4(a)(ii) of the Policy it is unnecessary to consider the further ground under paragraph 4(a)(iii). However, in the view of Complainant's assertions of bad faith the Panel records its finding that Complainant has failed to establish bad faith registration or use of the domain name by Respondent. As pointed out above Respondent has demonstrated legitimate reasons for the adoption of the domain name. There is no evidence that Respondent registered the name with the intention of selling it to Complainant or to a competitor of Complainant or that it did so in order to prevent Complainant from reflecting its trade mark in a domain name. Participation in negotiations for sale initiated by a complainant, by a respondent with a legitimate interest in the domain name, is not evidence of bad faith. Respondent is not a competitor of Complainant and there is no evidence that Respondent's registration has disrupted the business of Complainant or that it was registered for that purpose. Similarly, there is no evidence that Respondent has used the domain name to attract users to the web-site by creating a likelihood of confusion with Complainant's mark.

[arbiter.wipo.int...]

This decision has been quoted in many subsequent decisions. This was a small firm against a TV production company. A lawyer was used.

[edited by: eurotrash at 12:03 pm (utc) on Jan. 7, 2005]

[Shak]

>>then use a professional domain negotiator
Any hint of such, experience?

apart from myself, no

however i only have done my for myself and not really a professional :)

good luck

Shak

[edited by: Shak at 12:42 pm (utc) on Jan. 7, 2005]

[adfree]

SSDN: Shak: Successful Domain Negotiator.

[buckworks]

I'm understanding from the opening post that the domain was registered BEFORE the company registered the trademark. If that's accurate, I don't see any way anyone could accuse lisalosa of having registered it in bad faith.

Selling it "should" be a straightforward business negotiation.

[pageoneresults]

Selling it "should" be a straightforward business negotiation.

I'll agree with buckworks.

I'm also wondering if this can be turned around. ;)

[lisalosa]

Buckworks...you are correct. This was registered BEFORE big corporation trademarked the word. My example again was, I registered "word.com" PRIOR to big corporation trademarking "word". Thank you again all....

[BaseVinyl]

Our situation was similar. We have been making "widgets" for years and two years ago we came up with a word to describe the future of the industry that we saw would be coming. We registered a domain name "futurewidgets.com" and a year later we were contacted by a large company who had registered a trademark for the term "futurewidgets" and threated to sue us even before their application had gone through the USPTO process. We had to get a lawyer and spend money to dispute their claim on the term that we invented and had registered as a domain name two years prior. I guess we have priority of use on the term but the fact that weasels can come crawling out at someone at any time is disturbing.
Good luck!

[snsh]

if your "word".com is a real generic "word" then you are free to approach them to sell the name without fear of bad faith, because their trademark of "word" is narrow to a specific type of business (e.g. Apple branded computers).

however, if the "word" is a synthetic word like "haagendaz", and it's provable that you registered the domain in bad faith (i.e. you were aware that they were using the mark, even if they hadn't legally registered it), then precedent works against you, and i wouldn't feel too attached to the domain name.

and then there's grey area in between.