- Impact
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Hi Guys,
Im seeking independent advice from a lawyer on this one so I apologise for the vague details. Here's what happened in a nutshell. Seen as though its about to the hit the roof we will suggest the following hypothetical situation
I registered a domain that was <a name of a place + generic term.com> The name of the place is also the name of a company. So for example we will use XXXXXXXHOTELS.COM
At the time there was no trademark against this term (also its a suburb) so I registered it and advertised it on a site for sale.
The company named after the suburb have now trademarked the term which is my domain name and have sent me an email asking nicely for their newly trademarked name back otherwise they will send me a C&D and follow formal procedures. They have invited me to invoice them for the reg fee and my time to transfer it etc of up to $200.
PRIOR to all this the company emailed me and asked if the domain was for sale etc and I told them a price & they said they were liasing with their marketing department and then went quiet. The amount was in excess of $20k.
So, if this is bona fide and can be pulled off does this mean that someone can come along and TM the term used in a domain already registered and then ask for it back even though you owned the first?
In addition to this the lawyer the company used conveniently has offices in Australia as part of their global presence and have told me to communicate with the Australian office despite the company being based in the states and east.
Any thoughts appreciated. I am happy to clarify if I havent explained this clear enough.
Im seeking independent advice from a lawyer on this one so I apologise for the vague details. Here's what happened in a nutshell. Seen as though its about to the hit the roof we will suggest the following hypothetical situation
I registered a domain that was <a name of a place + generic term.com> The name of the place is also the name of a company. So for example we will use XXXXXXXHOTELS.COM
At the time there was no trademark against this term (also its a suburb) so I registered it and advertised it on a site for sale.
The company named after the suburb have now trademarked the term which is my domain name and have sent me an email asking nicely for their newly trademarked name back otherwise they will send me a C&D and follow formal procedures. They have invited me to invoice them for the reg fee and my time to transfer it etc of up to $200.
PRIOR to all this the company emailed me and asked if the domain was for sale etc and I told them a price & they said they were liasing with their marketing department and then went quiet. The amount was in excess of $20k.
So, if this is bona fide and can be pulled off does this mean that someone can come along and TM the term used in a domain already registered and then ask for it back even though you owned the first?
In addition to this the lawyer the company used conveniently has offices in Australia as part of their global presence and have told me to communicate with the Australian office despite the company being based in the states and east.
Any thoughts appreciated. I am happy to clarify if I havent explained this clear enough.