Quick Basic Legal Question - Can someone use my trademark in their domain name? | Warrior Forum - The #1 Digital Marketing Forum & Marketplace

12 years ago

You can not use a trademark in a domain name. Its that simple and very clear.

Where its 'murky' is if they registered the domain name before you registered the trademark. Look up the whois as to registration date.

Check these reources:
Domain Name Disputes (BitLaw)
ICANN | Uniform Domain-Name Dispute-Resolution Policy

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davezan

12 years ago

Originally Posted by cbpayne

You can not use a trademark in a domain name. Its that simple and very clear.

If you're intending to ride on or make money off of its trademark anyway, though
that appears to be in the OP's case.

Originally Posted by sharkey

is it legal for them to do that? Is this a good case?

I wish I could say yes or no, but your question is honestly tough to answer even
going by just what you described. Ideally no, but it'd be sticky if that competitor
acquired that domain name before your trademark started to exist.

Whether you have a good case or not is something only a lawyer can answer for
you, especially after checking any and all facts. These things are evaluated case
to case.

That's my IANAL opinion. Good luck.

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jamesvick

12 years ago

it's very simple. If they registered a website before you made it a trademark you can't do anything. In other case yes you can sue the **** out of them. Remember how iphone websites started disappearing? Verizon started suing all those who has iphone as a name in their website. The only person who registered it before iphone was a trademark, was paid $350,000 to give up the site but he didn't.

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sharkey

12 years ago

yeah I looked it up - they got it before we registered the trademark. It sucks too because they're doing SEO and backlinking for the site.

I appreciate the responses, by the way.

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cbpayne

12 years ago

Originally Posted by sharkey

yeah I looked it up - they got it before we registered the trademark. It sucks too because they're doing SEO and backlinking for the site.

I appreciate the responses, by the way.

That does not mean you should not file a dispute via ICANN. Even though they regsitered it before your trademark, they are now piggy backing on your trademark, so you may get a sympathetic hearing - if you are forced to give you the domain name, then you get the backlinks!!!!

See this:

In order to prevail, the trademark owner must show:

that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
that the party that registered the domain name has no legitimate right or interest in the domain name; and
that the domain name was registered and used in bad faith.

You can show 1, based on what you have said, you can make a case for 2 and 3
See:
ICANN | Uniform Domain-Name Dispute-Resolution Policy

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davezan

12 years ago

Originally Posted by Mark Andrews

Mark just holds his head in his hands and groans.

In fairness, the OP asked a "quick basic legal question" instead of "legal advice",
although both can be the same thing depending on the situation.

Originally Posted by cbpayne

Even though they regsitered it before your trademark, they are now piggy backing on your trademark

WIPO Domain Name Decision: D2008-0640

The Respondent registered the Disputed Domain on July 2, 2003. There is no evidence before the Panel that the Respondent was aware of the Complainant relevant activities at the time the registration took place. The Complainant's activities under this name do not appear to have commenced until 2006. This would not necessarily have been fatal to the Complainant's case had it been able to show that at the time of registration of the Domain Name, it was well known that the State of Tennessee intended to adopt the "Coverkids" name, or that the Respondent has (or perhaps should reasonably have been) aware of such intention on the part of the Complainant.

Anyway, OP, some lawyers give a free initial consultation if they "feel" the case
is simple enough. If, anyway.

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David

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jamesvick

12 years ago

Originally Posted by sharkey

yeah I looked it up - they got it before we registered the trademark. It sucks too because they're doing SEO and backlinking for the site.

I appreciate the responses, by the way.

well then remember that it is quite difficult to beat a brand name with same product name. I mean if :

sharkeyharpoons.com is selling abc harpoons and sharkeyharpoons.org is selling sharkey harpoons then you can beat .com domain with ease.

You see you have both domain name and product name (I hope so). In that case just seo your site too.

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sharkey

12 years ago

Originally Posted by jamesvick

well then remember that it is quite difficult to beat a brand name with same product name. I mean if :

sharkeyharpoons.com is selling abc harpoons and sharkeyharpoons.org is selling sharkey harpoons then you can beat .com domain with ease.

You see you have both domain name and product name (I hope so). In that case just seo your site too.

Thats exactly whats going on!

I looked at the arbitration/resolution filing fees and they can get really large depending though

so I'll have to take another look at it tomorrow when I'm not so tired but, at least I can file it and give the other company some grief.

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PatriciaJ 12 years ago

I think you should check your position with a lawyer who knows more about legalities than we do on here.

However...

Did your product exist before the domain name and is it a well known product? Did that other person know about your product before they bought the domain?

I'm asking that because it seems unfair that one person can buy a domain and spend time and money building a site on it and building up traffic. Then another person decides that they want to trademark it and then later on talks about arbitration which might effectively ruin that other person's business.

You knew that some of the domains were not available when you bought the rest up, so it was feasible then that there would be at least one more business competing with you using what at the time you were going to trademark - or have I got that wrong?

Personally I feel sorry for the other guy if he bought and built on the domain unaware that it was a business name that you were going to trademark in the future and now you are looking to pull his business out from under him.

Maybe it would be better business for you both if you offer to JV with him. Let him sell your product as an affiliate on his site and then you both win. Compromise could work out a lot cheaper than arbitration.
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- sharkey 12 years ago
  
  This isn't their main site - it's just a redirect to a feeder site for the main site - and I actually have some history with the person who owns the domain.
  
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Mark Andrews

Banned 12 years ago

Originally Posted by sharkey

Quick Basic Legal Question - Can someone use my trademark in their domain name?

Mark just holds his head in his hands and groans.

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Chris Chicas

12 years ago

In my opinion I would just take on the challenge and beat them in the SEO game -- specially if you have a few domains with the same words. And I would just let them have the name - as long as they are not tricking people into thinking it's your company that they are doing business with. I know a few well established businesses that use the same name due to the name popularity, and they seem to co exist quite well... as long as there is no trickery taking place.

And why give them brief? If they are making money then why not become affiliates or JV partners?

Life is too short for minor disputes.

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Barry Unruh

12 years ago

One thing I'd be curious about is if they changed their usage of the site AFTER you acquired the trademark. I have no idea if that has any legal ramifications or not, but it is sure easy to check by using the Wayback Machine on Internet Archive: Digital Library of Free Books, Movies, Music & Wayback Machine

You may be able to force them to stop using the domain name in a competitive/deceptive nature if it was not being used in that manner prior to you registering the trademark.

There are many people with McDonalds in their business name which will never be challenged since they are not competing, but anyone who would attempt to open up a restaurant using the same name may face some very challenging times. EVEN if they owned a McDonalds grocery store before and the restaurant is just a new addition to sell hamburgers.

But I'd sure recommend you explore the option Christiani and PatriciaJ are suggesting. Before you do any legal moves. Contact the owner and ask if they want to partner with you to get better benefit from their domain name.

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LetsGoViral

12 years ago

To those saying you can't use trademark in the domain name - it depends on the context.

Apple is a trademark.

But it doesn't mean you can't own a domain juicyapples.com

CONTEXT!

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Don Schenk

12 years ago

Originally Posted by sharkey

I found out my direct competitor has my trademarked business name in their domain name for one of their sites. it's mytradmark.

I know the end answer is "consult a lawyer" but I'd like to know if anyone knows/has experience with this already

Sharkey, who was the lawyer who researched your mark when you registered it with the US Patent Office? Trademak law is very complicated.

That is assuming you actually registered a trademark. It takes a lot of research, and costs $2,000 to $3,000 to do. If you had spent that money, a quick call to the lawyer who set it up for you will give you your answer.

I am just asking, did you actually register a trademark, or did you register a domain name? Not even close to being the same thing.

:-Don

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sharkey

12 years ago

Originally Posted by Don Schenk

That is assuming you actually registered a trademark. It takes a lot of research, and costs $2,000 to $3,000 to do. If you had spent that money, a quick call to the lawyer who set it up for you will give you your answer.

I am just asking, did you actually register a trademark, or did you register a domain name? Not even close to being the same thing.

:-Don

It's a registered trademark with the USPTO and I have a trademark attorney who charges me an arm and a leg. sorry if I was not more clear.

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Mark Andrews Banned 12 years ago

Originally Posted by sharkey

It's a registered trademark with the USPTO and I have a trademark attorney who charges me an arm and a leg. sorry if I was not more clear.

S/he charges you an arm and a leg precisely because s/he's qualified to give you legal counsel. S/he's there to protect, by law, your legal interests. To make sure you don't land yourself in hot water.

If you cannot see the advantage in using his or her services, if the exchange of money for his or her legal advice in your view does not suffice to alleviate or leverage the frustration or pain you're currently experiencing...

...asking on a forum for non-qualified legal counsel is certainly not your next best option.

S/he - your attorney / solicitor, is there for a reason.

Mark Andrews
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sbucciarel

Banned 12 years ago

It's interesting that they are selling a product with a different name than the trademark...is that correct?

I once won a trademark based on that fact alone. One of the rules of owning and defending a trademark is that it must be used in commerce. I wanted a certain trademark and did the filing myself. Got a letter back from the Patent and Trademark office saying it was declined.

Defended my position after researching saying the company had owned the trademark X for X number of years and had never used the trademark. They launched a company with a different name.

My trademark application was accepted and registered.

You still need the advice of a lawyer.

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varghesedavid

12 years ago

I think this link will be helpful - How to secure trademark protection for your domain name

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sbucciarel

Banned 12 years ago

Originally Posted by sharkey

it's mytradmark.us except it takes them to their product and not mine. It's possible they may have owned this site before I obtained my trademark as I had tried to buy up all the domain names with the trademark in it and I was unable to buy all of them (some were taken).

If you do have a trademark attorney, have them look up "First Use in Commerce" for trademarks. Registering a trade name after someone is using it does not give you an exclusive right to it and "First Use in Commerce" rules

Date of First Use:

This is a problem that trips up a lot of people and can cause a mark to be canceled if the applicant is not careful. Generally, in the application process the USPTO will simply take an applicant on their word about the date of first use for their mark. However, if the mark is contested in the USPTO Trademark Trial and Appeal Board (TTAB) or in federal court the person contesting can claim that the applicant's use of the mark was after the date specified in the application. A registration that claims first use earlier than actual first use will be considered "void ab initio", and the registration will be canceled.
The importance of Use in Commerce in trademark applications | Patents & Technology

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Chris Cole

12 years ago

I am glad I found this thread. I am on the opposite side of the fence in respect to the OP. I registered and own a domain name in which I have also launched and sold a digital product with a current active members area.

Then I receive an email from someone telling me "we're being awarded the ® (US registered mark)"

The thing is they are looking to release a product which is very similar to my product. I am also UK based, they are US based. I have spent many hours over this domain setting it up, adding the members scripts etc.. this is even before I added the content for it. Now someone is trying to tell me they own the rights to this, but they didn't register the domain name (.com)??? Then approach me after I launched my product.

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davezan

12 years ago

Originally Posted by Chris Cole

I am glad I found this thread. I am on the opposite side of the fence in respect to the OP. I registered and own a domain name in which I have also launched and sold a digital product with a current active members area.

Then I receive an email from someone telling me "we're being awarded the ® (US registered mark)"

The thing is they are looking to release a product which is very similar to my product. I am also UK based, they are US based. I have spent many hours over this domain setting it up, adding the members scripts etc.. this is even before I added the content for it. Now someone is trying to tell me they own the rights to this, but they didn't register the domain name (.com)??? Then approach me after I launched my product.

It essentially depends on who did what first. Best you talk to a solicitor who
specializes in these things.

At the top of my head, search online for Paul Keating Esq. Good luck.

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Quick Basic Legal Question - Can someone use my trademark in their domain name?

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