advice If I have a trademark for the domain I want, does that give me leverage on the buying price of the domain?

[allaboutdomains295]

Hi everyone! So I have a trademark application pending for a particular name. The domain for that name (e.g. name.com) is taken, but it's not being used right now (the domain points to a broken link, and it's been like that for a few years).

The nature of the name is that it would pretty much only be used for a particular industry.

So my question is...if my trademark application gets approved, wouldn't the domain name be close to useless for the current domain owner?

I'm asking because I would like to buy the domain name from them, but I found out through some research that they paid a pretty expensive price for that domain name in the last few years. I'm assuming if they were to let me have the domain, they would probably want to recoup what they paid, but I can't pay that much!

I'm wondering what sort of leverage I might have, if any, or maybe to rephrase the question more appropriately: what would be going on in their mind from their perspective if I were to approach them?

I would really appreciate any advice before diving into this alone!
Thank you!

A few things I'll add:
I'm aware that owning a trademark is not the same as a domain name, and vice versa.
As I'm typing this, I realized that where I have the trademark for could also come into play, for example if the owner is in one country whereas my trademark is in another. I do plan to file an international trademark application, and there is a reasonable likelihood it will overlap with the current domain owner's location (though I cannot be certain).

 

[Samer]

@jberryhill

 

[DigiNames]

The trademark doesn’t give you any right to the domain name. It may or may not hurt their chances to sell it to someone else.

If they paid a lot for it, they might have plans to develop it, and possibly some rights to the name that could lead them to challenge your trademark if they are made aware of it.

One thing I will say is that I wouldn’t approach them with the “I got a trademark, you can’t sell it to anyone else, so you might as well sell to me cheap” angle. That usually goes very bad for the buyer, and it would only cause me to raise the price or possibly never sell the name to the person depending on how entitled they sound.

 

[bmugford]

Hi everyone! So I have a trademark application pending for a particular name. The domain for that name (e.g. name.com) is taken, but it's not being used right now (the domain points to a broken link, and it's been like that for a few years).

The nature of the name is that it would pretty much only be used for a particular industry.

So my question is...if my trademark application gets approved, wouldn't the domain name be close to useless for the current domain owner?

I'm asking because I would like to buy the domain name from them, but I found out through some research that they paid a pretty expensive price for that domain name in the last few years. I'm assuming if they were to let me have the domain, they would probably want to recoup what they paid, but I can't pay that much!

I'm wondering what sort of leverage I might have, if any, or maybe to rephrase the question more appropriately: what would be going on in their mind from their perspective if I were to approach them?

This sure sounds like a bad faith attempt to acquire a domain for below market value.

Brad

 

[J.R.]

There are 42 TM classes. You have a pending TM but that doesn't mean you have a footprint in commerce.
You said you have a TM pending for a NAME, but not actual goods and services you have used in commerce.

From your post, its almost certain the domain owner's rights precedes yours.

You claim to know the price the registrant paid for the domain, so expect a 5x-10X minimum offer if they want to sell the domain. If they paid a lot for the domain, you are going to pay a lot to purchase the domain.

Also, you are reaching out to the domain owner, so you have no leverage.

Finally, you came to a domainer forum expecting tips & tricks to be shared to allow you to abuse and manipulate another domainers rights?

You are a scumbag.

 

[bmugford]

There are 42 TM classes. You have a pending TM but that doesn't mean you have a footprint in commerce.
You said you have a TM pending for a NAME, but not actual goods and services you have used in commerce.

From your post, its almost certain the domain owner's rights precedes yours.

You claim to know the price the registrant paid for the domain, so expect a 5x-10X minimum offer if they want to sell the domain. If they paid a lot for the domain, you are going to pay a lot to purchase the domain.

Also, you are reaching out to the domain owner, so you have no leverage.

Finally, you came to a domainer forum expecting tips & tricks to be shared to allow you to abuse and manipulate another domainers rights?

You are a scumbag.

I am in a similar situation where someone has a pending TM for a generic term, for the generic use.

They already contacted me and tried to strongarm the domain, saying it is useless now.

This is a 20+ year old domain that I have owned for over a decade.

I told them to shove it.

I will also save all their communications to show bad faith, if needed.

I have seen other people mention this strategy. It is really sleazy.

Brad

 

[J.R.]

I am in a similar situation where someone has a pending TM for a generic term, for the generic use.

They already contacted me and tried to strongarm the domain, saying it is useless now.

I told them to shove it.

I have seen other people mention this strategy. It is really sleazy.

Brad

My guess is OP is hoping to trick a newbie into selling low.
TheDomains.com had a classic post some years back about every domainer needing to learn basic TM law principles.

I was so moved by the post, I took proceeds from a dn sale to pay tuition to complete a TM law class at a local law school. Money well spent.

Just today, DNW.com posted about Nissan.com & Nissan.net being stolen from lawful owners account at the registrar level. Owner having already spent over $3M protecting the assets from Nissan corporate pirates.

When you own great dotCom domains, they are like gold deposits sitting in a bank and should be protected and monitored at all times.

There are a lot of different digital pirates out here doing anything they can to steal domains from the lawful owners. OP is another type of pirate hoping to use administrative ignorance on the part of the targeted domainer to manipulate the owner into a bad deal.

OP is a pure scumbag.

 

[bmugford]

My guess is OP is hoping to trick a newbie into selling low.
TheDomains.com had a classic post some years back about every domainer needing to learn basic TM law principles.

I was so moved by the post, I took proceeds from a dn sale to pay tuition to complete a TM law class at a local law school. Money well spent.

Just today, DNW.com posted about Nissan.com & Nissan.net being stolen from lawful owners account at the registrar level. Owner having already spent over $3M protecting the assets from Nissan corporate pirates.

When you own great dotCom domains, they are like gold deposits sitting in a bank and should be protected and monitored at all times.

There are a lot of different digital pirates out here doing anything they can to steal domains from the lawful owners. OP is another type of pirate hoping to use administrative ignorance on the part of the targeted domainer to manipulate the owner into a bad deal.

OP is a pure scumbag.

This strategy rarely works, as most people with valuable domains tend to know that. That is especially true if they "paid a pretty expensive price for that domain name in the last few years".

Legal issues aside, this can really open you up to bad outcomes.

I have seen some brutal social media callouts for this type of behavior.

Brad

 

[ARCCLOUD]

This is the exact situation I am in but the reverse as I am the domain holder. Multiple factors come into play as far as first company use of TM, when did they register the domain etc. But I will let the experienced @jberryhill explain it better.

 

[J.R.]

This strategy rarely works, as most people with valuable domains tend to know that. That is especially true if they "paid a pretty expensive price for that domain name in the last few years".

Legal issues aside, this can really open you up to bad outcomes.

I have seen some brutal social media callouts for this type of behavior.

Brad

I visit Hacker News from time to time to learn more about the mindset of startup founders and how they think about branding, marketing, and domains. Specifically how they discuss these elements of business among themselves.

This How to trick a domainer out of their digital gold type of post appears often on the Hacker News forum/threads.

They refuse to follow Paul Graham's advice in his famous blog post: Change Your Name (August 2015).

OP probably expects the same bad advice on how to hijack a badly desired EMD domain.

 

[allaboutdomains295]

Hi everyone, I appreciate your replies!

I’m sorry if my post came across as scumbaggy or bad faith, but I wonder if there is a tendency of this forum to consist more of avid domain sellers, which is why my post may have been interpreted as such.

I am trying to start a small business. I have genuinely filed a trademark application and intend to use it. While for some, around $15k for a domain name may not be a lot, for me it is.

And while I have acquired an alternative domain name that should work fine, the domain name that I would prefer is taken.

@bmugford I’m sorry that you’ve felt victim of the flip side of the situation.

Perhaps this thread would be better off interpreted as a discussion for what both sides face, so that there is a common, fair ground that can be found.

In my case, for example, the current owner paid an amount for the domain. They spent a few years trying to create a website for it (they created a placeholder logo, a coming soon sign, etc) which for unknown reasons never came to fruition, and the site is now dead.

To me, that is equivalent to a business investment that may have fallen through.

So they have an asset, and perhaps they still hope to do something with it or perhaps it’s a dead weight to them, who knows.

Now, I genuinely filed a trademark application some time ago because I am working on developing this business. As a startup, I can’t afford to pay large sums of money, which means I either pick a cheaper domain, or see if they are willing to let it go at a price I can afford.

But before I dive in, it would be helpful to know the considerations.

@DigiNames , for example, brought up an excellent consideration that if I bring up my trademark off the bat, it could potentially create animosity. That could affect negotiations from an emotional perspective.

From a legal perspective, if I am conducting business under a certain name, and the current domain owner (who currently has no business under that name) chooses to use their domain name in a line of business that overlaps with mine, I would think it’s actually my rights that precede theirs. Their ownership of the domain name does not constitute use of the trade name in commerce (similarly, my use of the trade name in commerce would not automatically give me the right to the domain name).

They are welcome to keep their domain forever, but it would have limited value (I believe) because they could only use it for something that doesn’t overlap with my trademarked use cases and registered regions.

I’m not trying to be mean, I’m just saying it how I believe it is. While they may have paid a lot for the domain, I have also plaid plenty in legal and other fees to start a business and acquire a trademark, etc. Buyers and sellers will always be at odds with each other until they find a middle ground, which is what negotiation is after all!

Anyway, I don’t mean to ramble, but so far what I’m hearing is that:

It could cause the owner to feel animosity (but if they choose to keep the domain because they are upset, that decision is just costing them money, unless they have a specific long term strategy in mind)

I’m open to your thoughts!

 

[bmugford]

@bmugford I’m sorry that you’ve felt victim of the flip side of the situation.

Perhaps this thread would be better off interpreted as a discussion for what both sides face, so that there is a common, fair ground that can be found.

Here is what not to do -

https://twitter.com/x/status/1648789819957338113

Here is what to do -

https://twitter.com/x/status/1667547165500272640

 

[Samer]

This is the exact situation I am in but the reverse as I am the domain holder. Multiple factors come into play as far as first company use of TM, when did they register the domain etc. But I will let the experienced @jberryhill explain it better.

I consider John, the best in the game. Hope he replies.

 

[J.R.]

From a legal perspective, if I am conducting business under a certain name, and the current domain owner (who currently has no business under that name) chooses to use their domain name in a line of business that overlaps with mine, I would think it’s actually my rights that precede theirs. Their ownership of the domain name does not constitute use of the trade name in commerce (similarly, my use of the trade name in commerce would not automatically give me the right to the domain name).

This is an assumption that may not hold legal water. Like you said, this is a domain owner that paid $15K for a domain. Expect this domainer to fight you legally if you attempt administrative piracy.

Many judges and panelists have made it clear, a business owner has a duty to consider their branding based on existing domains.

In other words, you already are aware that the dotCom EMD of your proposed business is taken. Hence, the rational thing to do would be to pay what the domain owner is asking or rebrand to something else you can own in the EMD.

In your case, you probably commit to admin piracy, lose and end up paying much more or being forced to rebrand anyway.

Nobody cares that you are too poor to afford the domain, you pay, use an inferior extension, or rebrand.

 

[mdent]

I don't know too much about the legal side of things, but I do know that getting the trademark now won't help you get the domain cheaper, in fact it might cost you more It's a good move regardless if you're serious about your business and you're confident in the name.

If they paid 10k+, they're not going to let it go cheap. In your position I'd register an alternate domain, get the business up and running and start saving up for the domain you really want. Rebranding later with a stable stream of revenue is going to be a lot less painful

 

[bmugford]

Nobody cares that you are too poor to afford the domain, you pay, use an inferior extension, or rebrand.

Yep, with a limited budget comes limited options.

There are endless cheap inferior options.

Brad

 

[bmugford]

I’m not trying to be mean, I’m just saying it how I believe it is. While they may have paid a lot for the domain, I have also plaid plenty in legal and other fees to start a business and acquire a trademark, etc. Buyers and sellers will always be at odds with each other until they find a middle ground, which is what negotiation is after all!

It is hard to reach a fair middle ground with the "I have a pending TM so your domain is useless" approach.

Just make a serious offer if you want the domain. If not, move on.

Brad

 

[allaboutdomains295]

@J.R. thank you for suggesting the articles, I'll check them out!

@bmugford , thank you for the Do's and Don'ts. The good news is, I was already on the right track with your "Do" list to make a serious offer. Wasn't planning on making any threats.

@Samer thank you for suggesting others weigh in, I appreciate it!

@mdent I appreciate the candid answer. Your suggestion may very well be the route I have to take. Given my industry/situation and the type of business, the ".com" of the domain is not necessary but a nice to have, and would likely not require a rebrand if I do acquire it in the future. So perhaps I make an offer, don't bother mentioning the trademark, see if there's a price we agree on, and if not, I drop it until I can save up to offer a higher price later.

In that situation, the thing that I'm not sure about here is...let's say my business takes off in the next few years. They may be inclined to hike up the price because they know I'm successful! But on the flip side, I'm successful, so it's unlikely anyone else but me would want to or could use the domain (due to my presence in commerce)... so now what!

I appreciate the civil responses of this forum and the genuine desire of everyone to have a productive discussion. I can understand that many of you don't like where I'm coming from, but I guess I should have expected a gazelle would receive no sympathy from a den of lions on this thread

 

[bmugford]

@bmugford , thank you for the Do's and Don'ts. The good news is, I was already on the right track with your "Do" list to make a serious offer. Wasn't planning on making any threats.

Well, if you just want to make an offer there is no problem.

It is possible they might take less than they paid if plans have changed.

The problem is when you talk about using "leverage" from your pending TM application.

Brad

 

[allaboutdomains295]

Thanks @bmugford , and I realize now that I think my question was mistitled, perhaps offensive even.

What it should have been titled is "How does my registered trademark affect the worth of a .com domain name owned by someone else?"

My goal is to understand how these factors affect the fair value for the domain given the circumstances, so that I have an expectation of how much I would reasonably have to pay.

That would then give me an idea if this domain is reachable within my budget or not.

It would also give me an idea of whether it is better to make an offer prior to owning the trademark or after.

 

[bmugford]

Thanks @bmugford , and I realize now that I think my question was mistitled, perhaps offensive even.

What it should have been titled is "How does my registered trademark affect the worth of a .com domain name owned by someone else?"

Well, first of all no one has any idea what your TM is.

Just because you TM something doesn't give you absolute protection, for every use.

There are different types of trademarks.

Because you stated the following it makes me think there is likely some suggestive use to it -

The nature of the name is that it would pretty much only be used for a particular industry.

My goal is to understand how these factors affect the fair value for the domain given the circumstances, so that I have an expectation of how much I would reasonably have to pay.

That would then give me an idea if this domain is reachable within my budget or not.

You don't really have any leverage, unless you are going to make legal threats...and that can end poorly in a number of ways.

What you should reasonably pay is what you think the domain is worth. Your pending TM application should have no impact on that.

The short of it is just make an offer. If the other party is interested in the price range, maybe you can work something out.

If you don't burn bridges now, it might be available to buy later when you have a higher budget.

Outside of that, you are basically going to have to settle for a different domain.

Brad

 

[cooljub]

I guess I should have expected a gazelle would receive no sympathy from a den of lions on this thread

Welcome to namepros

 

[john888]

Your trademark for your wares does not stop the domain owner from trademarking the same brand name for different wares and services. You may also bleed traffic and email to the owners domain name. Get a bank loan to buy the domain if you believe your new business has value. Ask the seller for a 2 year payment plan. You can also re-sell the domain if your business goes bust.

 

[capybara]

I have also plaid plenty in legal and other fees to start a business and acquire a trademark, etc.

Now, I genuinely filed a trademark application some time ago because I am working on developing this business. As a startup, I can’t afford to pay large sums of money

People who "can't afford" are typically busy with development of their online projects and until there's either strong revenue stream or some interested investors show up won't even bother with spending on trademark applications.

The nature of the name is that it would pretty much only be used for a particular industry.

That is a controversial statement in itself. If "the nature of the name" is descriptive towards something in particular industry, then it can't be trademarked for that industry. E.g. you can't trademark "smooth payments" for a payment provider business because it would infringe on everyone else's right to use it even as a description of their services.

Overall the biggest drawback for the plan to lock the domain out of the market with a trademark registration is that the cost of maintaining a domain registration is $10 per year. Imagine waging a war on someone who doesn't even know they are being in a war and simply paying on the registration the same way they used to do it for years before. Which is the likely scenario if you won't ever contact the owner, you keep your project on an inferior domain, they keep their registration.

Things can be worse for you if the registrant is made aware of your war and they have proficiency with online advertising. Having your keywords warmed up and traffic leaks if any really helps to make some easy money for those who know what they are doing while steering clear of the trademarked area.

 

[allaboutdomains295]

@capybara @john888 Thanks so much! Very good points, and that really helps broaden my perspective of the situation.

Really appreciate the insight everyone! Seems like the trademark can be a double edged sword with a lot of variables. Best to keep it simple, particularly for a new business.