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trademark domain question

by bleu
11 replies
Hi,

I have a small business with a common law trademark, I just went to register the trademarked name and it's taken by a domain name broker who is not using it - just selling it for 500 dollars.

I checked and they registered the name after I started using the name in commerce.

I have emailed them twice asking nicely about their policy with trademarked domains but they have not answered.

Anyone have any experience or advice for me?
#domain #question #trademark
  • Profile picture of the author sbucciarel
    Banned
    Only a lawyer could advise you on this one. I have no idea about domains that aren't actually being used ... is it parked? If so, then it is being used, but you'd still need the advice of an attorney. Having your trademark actually registered gives you stronger standing in court.
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  • Profile picture of the author Domainate
    It would cost you more than $500 to go after it. Just the fee to file a UDRP alone is $500 for a single-member panel or $1,500 for a three-member panel, not to mention fees you'd be paying your attorney. While some UDRPs are won with a common-law trademark, if the domain is for sale for only $500, you're probably better off just buying it and being done with it.

    Also, if he had the domain before your business started doing business, you likely wouldn't win a UDRP.
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  • Profile picture of the author JMSD
    Originally Posted by bleu View Post

    Hi,

    I have a small business with a common law trademark, I just went to register the trademarked name and it's taken by a domain name broker who is not using it - just selling it for 500 dollars.

    I checked and they registered the name after I started using the name in commerce.

    I have emailed them twice asking nicely about their policy with trademarked domains but they have not answered.

    Anyone have any experience or advice for me?
    As already advised, you need to seek legal advice from a qualified person. Any advice given here would not be of any value to you.

    When you decided on your business name and trademarked it, you should have also purchased the domain name for it. Since you did not and somone with commercial sense did so with a view to selling it (perhaps, to you), your only option is to buy the domain and have done with it.

    When I decide on a business name, I also check to see if that domain name is available too. If so, I buy every variation of it to protect my brand. If the brand name is important to me, I register it, too. In that way, no one can have me over a barrel or cause me sleepless nights with my brand name.

    James
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  • Profile picture of the author STEVEN VEE
    Where are you geographically? I had a similar experience in Australia that was resolved fairly easily.
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  • Profile picture of the author Gene Pimentel
    Excellent advice from Domainate. Some battles are not worth the time and money, unless you're more interested in just making a statement.
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  • Profile picture of the author AngelInvestor
    Steve @5 talks sense - it's all about where YOU and the current owner are registered for business. Most EU members for example will help you get that with minimum effort, just find the regulator that can help you.
    The other thing is - domains and brands these days are so over-valued. Is this really impacting your business or just a nuisance? Put a price on it - 500USD might have been negotiable. However, your angle to approach the registrant directly was a tactical error - now they are aware you feel entitled to it and they can play you for more than 500USD. You can still try to social engineer your way to a lower price, but will be a little more difficult now.
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  • Profile picture of the author bleu
    Thanks everyone! Yes, huge mistake on my part for not buying it right away.

    I had the business before he bought the name and I'm in the US.

    There is a disclaimer on the website selling the name that says they are not aware of any third party owning trademark rights and that if anyone becomes aware of such a person they should contact them right away so that they can take appropriate action.
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  • Profile picture of the author godinu
    U could file a claim with ICANN to get the name back if the name is something that would be specific only to you. I don't know the cost to do so, however. We had to do this a while back when a squatter wouldn't give us back a domain that matched a specific company/location, but it took a while (and definitely some lawyer bills).
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  • Profile picture of the author bleu
    Oh thanks, I see I can file a complaint online with ICANN for "UDRP - Trademark Infringement Cybersquatting Abusive Registration" it's just a simple form, I wonder if it would do any good, anyone ever tried that?
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    • Profile picture of the author davezan
      Originally Posted by bleu View Post

      Oh thanks, I see I can file a complaint online with ICANN for "UDRP - Trademark Infringement Cybersquatting Abusive Registration" it's just a simple form, I wonder if it would do any good, anyone ever tried that?
      Bleu, that form you're referring to is the Uniform Dispute Resolution Policy (UDRP)
      as mentioned earlier. It costs money to pursue that, and you still have to prove
      your claims. (especially through a lawyer if one's unfamiliar with it...)
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      David

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  • Profile picture of the author HeySal
    I'm not a lawyer, and don't play one on TV, but if this happened to me I'd call a patent search office and talk to the manager. I'm thinking they would probably be rather familiar with the laws and would be willing to discuss the situation with you a little bit free of charge - at least enough to give you an idea of your options and help you decide the best way for you to handle the situation.

    Edit: I meant a trademark search office. Patent is a different animal. Sorry.
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    Sal
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