Trademark name & then go after .com

I own .co.uk & .eu and a few others

[Calculus]

I've been trading as www.myname.co.uk for the last 3 years and have built up the website to be a well known name.

The site is for the UK market so has a .co.uk name. Someone else owns .com but it is just parked and has been for several years. Crappy advertising & spammy links, that sort of thing

I approached sedo.com to act as brokers to possibly buy the domain and they came back that is was worth £14,000!, I thought more like £1,000.

Would it be possible to try a backdoor route to get hold of the domain and register myname as a trademark and then try and force the sale of the domain to me?

But trademarks as I believe are often country specific, so would I have to trademark both in the UK and the US.

Is this a workable solution?

Thanks

[walkman]

no need to force him, all you need is to pay his asking price, or negotiate a lower one. As far as the sleazy backdoor method: it will work--if he's a total idiot.

[Calculus]

Walks

I've never made any contact with the owner it was sedo.com who appraised it at £14,000, but I think this is far too much.

I'd be willing to go to £1,000 but I also want to get trademarked at some time in the future, most probably in a year's time.

I think Sedo's valuations are crazy anyway alongside what many domain owners think their domains are worth.

Hell, if they're valuing all these domains at these prices then I reckon I've got over £50,000 worth of assets just sitting around doing nothing.......

[LifeinAsia]

Then why not try contacting the owner sirectly and offering the amount you're willing to pay?

[walkman]

Obviously you think it's too much; you'd rather get it for next to nothing. I would too, but that's not how it works.

How would you feel if I bought his name, registered it as trademark, and forced you to sell your domains to me for $2000.00? If your site is as famous, and important as you stated, you should buy him out. If it isn't, then why bother. After all, you took the chance knowing that the .com was taken.

Even the retainer for the lawyer will cost you more the the Sedo price...

[Calculus]

LifeinAsia

That's obviously an option open to me. But how does one contact an owner of a domain if it's privatly registered.

[Webwork]

You might want to proceed with a bit more caution and a bit less presumption. You must may find that the person you are intending to outflank by registering a trademark already has enforceable trademark rights that predate yours, in which case he or she might respond in a way that just doesn't make your day.

The mere fact that a domain name is sitting idle doesn't mean that there are other activities going on, waiting for funding for online development, etc. I know businesses that registered their domains in the late 90s that still haven't gotten around to building a website.

[Calculus]

Webwork, oh I'm cautious all right but thanks for pointing it out anyway.

I'm months away from actually doing anything, just getting some ideas about how to proceed.

As for the other fella getting a trademark, that's possible but I think he/the company owns 1,000s of domains so it's unlikely. Also, the .com was registered after the .co.uk was registered by over a year. This was a major mistake made by the previous owners of the website before I came in.

Therefore the date of first registration of the .co.uk domain might make it hard for him to outflank me especially as the .com has never been anything more than a collection of spammy links.

Anything is possible though.

[Calculus]

Dne a little bit of digging and found out who owns it.

[Webwork]

Just don't confuse domain name registrations and website URLs with the right to exclude others from using the words in the domain name, especially generic words or industry phrases. Trademark is a bit more than filing a claim to the effect that "I own, to the exclusion of all others, the rights to these words".

Spend some time at the [USPTO.gov...] and you will plainly see what I am talking about. There are myriad examples of companies having trademarks filed to the very same words or phrases, just as there are myriad examples of dead applications that were based upon efforts to claim rights to words or phrases that simply don't support a trademark.

Especially across national borders.

All rather interesting, as it's an area that I've been studying for awhile due to my many interests and many projects. :)

[Lobo]

I think what you are suggesting is just as dodgy as cybersquatting..

You only have 2 options , A: contact the person directly and see what his price is and if you are willing to pay?

B: don't buy it...

[novice]

Sedo was operating under sedo.co.uk prior to purchasing sedo.com for $80,000.

Bet they wished they could have got their .com for £14,000.

[Calculus]

I wanted some information, wanted some ideas and right now know and understand a lot more about the situation than I did 24 hours ago.

Thanks a lot everyone for your comments, all very good stuff

[edited by: Webwork at 1:40 pm (utc) on June 3, 2006]

[ChrisBolton]

One thing Calculus, If you get a trade mark AFTER he registered his domain name, it won't help your case at all. He had the domain name before you got your trademark, so he's not breaking any rules (i'm led to believe).

Try and get into negotiations with him directly. Offer him £500, if he comes back with £2500, then you are half way there, if your negotiating skills are good, you could get him down to £1000, or near enough.

Chris B.

[trader]

What category of business is your uk name in? And is the com in the same category?

Also, how do you know the com takes away some of your traffic? How much?

[stu2]

You might send an email to the privacy email address. Occassionally they get thru.

If you need a trademark you should get one anyway. It won't help you at all in snagging the .com

[edited by: Webwork at 12:04 am (utc) on June 4, 2006]
[edit reason] WebmasterWorld T.O.S. [/edit]

[wmuser]

"Would it be possible to try a backdoor route to get hold of the domain and register myname as a trademark and then try and force the sale of the domain to me? "

It will not work out,even if you do trademark the name,the WIPO will count it as it was regsitered after .com domain name has been registered.
He didnt know about trademark and there is no bad faith evidence

However consult <a domain name lawyer> lawyer

<See WIPO or NAF decisions for lawyers who routinely handle domain name intellectual property issues>

[edited by: Webwork at 3:30 pm (utc) on June 7, 2006]
[edit reason] Charter [webmasterworld.com] [/edit]

[Iguana]

I'm possibily in the opposite situation. I registerd a domain name in 1999. I've always had a holding page e.g. coming soon on the domain. Back in about 2002 I was contacted by someone asking if I wanted to sell the domain (but also saying 'I don't have much money'). I decided not to because its a really good name.

Recently I started using the domain as a blog. I was alerted last night to the fact that the name (when split up into words) was Trademarked in 2004. The company that the emailer worked for had devloped a product around the name. I wonder whether they are going to consider trying to use the Trademark against me now that I appear in the Search Results. And I cannot, currently, afford a lawyer.

[bwelford]

You may have a defence, Iguana, if your blog is in a different sector than the products and services of the other company. Trademarking cannot block all uses of a word or phrase. It only blocks uses of the word or phrase for specific market sectors. We have the interesting case in Canada recently where the Supreme Court ruled that Barbie's Restaurant could continue to use the name Barbie despite the complaint from Mattel that Barbie is really their doll. :)

[Iguana]

Thanks bwelford. We are in different sectors. They are not a big company and they have to appear cool to sell their cool product. I think I'll offer them a link at the top of the page of 'if you were looking for...'. I need to get it sorted because the blog is building up traffic really well and I don't want to have to move and re-brand in a year's time.

[wmuser]

Iguana except the different sector defense,is teh name generic or something like ibmbest computers?
If the name is generic and if its in the same sector,rarely they have any chances for wining the case at WIPO

[Iguana]

It's a generic phrase. I'm feeling more reassured after this conversation. Althought things may change if I reach #1 in the SERPS for the phrase!

[wmuser]

Then i wouldnt worry much about complaint,no matter if its a big company,they know that they almost dont have a chance to win the case

[fitzer]

But how does one contact an owner of a domain if it's privatly registered.

Check the whois history. The domain may be private now, but may have been public in the past (and may be the same owner).

Try contacting the private listing company by email and by phone to see if they will pass a message through to the owner; I've had success doing this in the past. Just be friendly, not threatening : )

Good luck!

<No tool drops please>

[edited by: Webwork at 5:36 pm (utc) on June 8, 2006]
[edit reason] Charter [webmasterworld.com] [/edit]