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question My domain is now trademarked by somebody else....

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GreenGambler

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Hello,

I am a part-time painter/artist. I've had my domain name for 8 years now and have always used it for either my artwork website or to forward to my artist Facebook page.

About 2 years ago an import company registered my domain name as their trademark. They now sell branded art supplies on Amazon, eBay, Walmart, using my domain name as their brand.

I never filed for a trademark but I have always used the domain name, never had it parked and it's always been related to my artwork.

I'm just wondering if this companies brand continues to grow, is there a chance they can force me to give them my domain name?

Thanks for your help,
Rich
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
I think that they might contact you soon to buy the domain from for a nice sum ;)
 
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I think that they might contact you soon to buy the domain from for a nice sum ;)

That would be nice, but it doesn't always work out that way. They could just as well sue him for the domain. It's happened many times in the past.
 
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Just don't approach them and don't type the domain on here or anywhere else publicly, stating it's your domain and you know about their trademark.

Since you owned the domain long before the trademark, i don't believe much can be done (unless they really pushed it), but clearly you don't own the domain 'in bad faith'.

Best thing for you (as the owner of the domain) is just forget about it, you don't know anything said company or their trademark.
 
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If you can show all your pre-dated web material and usage, I don't see you having any problem. 8 years of historic, predated usage is a lot for any Adjudicator to ignore. Check what classes they have filed under. It is not as if you didn't show due diligence when you started to use the domain.

What brought the trademark to your attention ?? lots of companies will place 'TM' in their headings without ever having registered the Mark.

I Personally have (and still do) hold plenty of dotcoms with subsequent trademarks, never any problem.

Lets note they didn't register YOUR domain as a TM , just the same word(ing) If the company concerned has spent much (time or money) on their identity, then you can pretty sure they already know about you anyway
 
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What brought the trademark to your attention ?? lots of companies will place 'TM' in their headings without ever having registered the Mark.

I've been contacted on Facebook a few times now by their customers wanting to know where to find my company website. At first I was like, "I've never heard of that art supply company", after the third message I decided to do some research.
 
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And a trademark can only be registered in certain classes, Have you checked the Classes and description of usage ??

it could be a trademark purely for the importation of certain goods. If you want me to have a private look PM me the domain, nothing will go on the board unless you post
 
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1. XYZ person registered a trademark for the CryptoWorld brand;
2. XYZ person will request the ownership of the CryptoWorld.com domain from a previous owner.

Does it work this way? I'm not sure that we can get any domain for just registering a similar trademark.
 
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As far as I can see on Trademarkia, they just applied for TM, and at this moment, they don't own it.
 
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I am sure you have nothing to worry about. The domain registration pre-dates the trademark, just make sure you don't use it in bad faith or actively approach them to try and sell it.

@jberryhill is the guy who will really be able to provide a much better answer.

Thanks
 
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Hello,

I am a part-time painter/artist. I've had my domain name for 8 years now and have always used it for either my artwork website or to forward to my artist Facebook page.

About 2 years ago an import company registered my domain name as their trademark. They now sell branded art supplies on Amazon, eBay, Walmart, using my domain name as their brand.

I never filed for a trademark but I have always used the domain name, never had it parked and it's always been related to my artwork.

I'm just wondering if this companies brand continues to grow, is there a chance they can force me to give them my domain name?

Thanks for your help,
Rich

1) I'm not a lawyer.

2) My understanding, TM is from first use. So you may have a common law trademark that is being infringed.

3) TM's require maintenance. That includes notifying companies, people that infringe in the mark.

Call a lawyer (TM)
 
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I've done the basics and replied, I'm sure it will help
 
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I've done the basics and replied, I'm sure it will help

Yes you did. I really appreciate your help, you are awesome!!

Thanks to everyone who chimed in, I'm grateful to be part of such a knowledgeable community!
-Rich
 
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double post on accident - removed
 
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There is something called Reverse Domain Hijacking which occurs when a trademark owner attempts to secure a domain name by (wrongly) claiming cyber-squatting.

If you read the wikipedia article (https://en.wikipedia.org/wiki/Reverse_domain_hijacking) you will find the following:

Circumstances which have been cited ... as justification for a finding of reverse domain name hijacking includes:
  • When the registration of the domain predates any trademark rights of the Complainant.
  • When the complaint has provided no evidence of bad faith registration or use directed towards the Complainant.
  • Where the Complainant has used the UDRP as a Plan "B" option to attempt to secure the domain after commercial negotiations have broken off.
  • Where the Complainant has attempted to deceive the domain owner or makes misrepresentations or fails to disclose material information to the panel.

And ...

o Your registration predates any trademark of the complainant.
o You have no history of bad faith towards the complainant.
 
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Post deleted.
I forgot I said no further comment from me
 
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If you are using the domain long before they applied for trademark, it shouldn't be an issue at all. DO NOT try to contact the business, if they ever contact you, you can reply back after due consultation with experts.
Archive your current pages in archive.org (Try searching for your pages there, if it does not exist, there will be option to save it) and archive.is (you can jut paste any url and ask it to be archived), this will help you if any legal matter arise.
 
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You will be fine, you owned the name long before they filed the TM, and you have been actively using the domain. They can come to you but they will have to buy it from you.

They could just as well sue him for the domain. It's happened many times in the past.

They wont win though, he owned the name long before the TM.
 
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If you feel that your own common mark and brand is being diluted, you could, at a not insubstantial cost, attempt to take legal action against them!
 
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If you feel that your own common mark and brand is being diluted, you could, at a not insubstantial cost, attempt to take legal action against them!

there is no need for him to attack those guys
in case the classes are not same as his


don't react to 3rd party inquiries for the other guys services
and don't list anything related to their trademark on the page
which might be difficult

as long as the trademark is not registered but just approved
there should be an easy way to comply

but for that you need lawyers help you

if you don't want to sell them your domain later on
that's what you want to do


--
no legal advice I am not a lawyer
 
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Hey green pm me if youd like as i have had experience with exactly this kind of case.

Remember a trademark is two things : the mark and the use in commerce.

If your use in commerce is clearyl different then theirs, you have nothing to worry about and can actually even probably register a TM . Someone above mentnioned the reverse domain thing, that is poissible but they have to prove you are blatantly diluting and copying their TM for malicous purpose, i.e namepros.net that is the same exact service, site, everything except where the cash goes.
 
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I'd recommend also getting a CC because your dealing with art, it is easy actually and goes a long way, sometimes its even more important than the TM
 
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there is no need for him to attack those guys
in case the classes are not same as his
Um, no. The classes are same (or extremely similar and related):

I am a part-time painter/artist. I've had my domain name for 8 years now and have always used it for either my artwork website or to forward to my artist Facebook page.

About 2 years ago an import company registered my domain name as their trademark. They now sell branded art supplies on Amazon, eBay, Walmart, using my domain name as their brand.

Both are related to art!
 
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related to art but doesnt mean same class, i'm pretty sure there's a difference in class of serviice
 
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You are safe.
If they want to force you, of course they can try.
But rest assured, they will not win even if they engage best lawyer in the world.
 
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