Domain name and trademark issue!

[ThreeD]

Ok this shouldn't be too complicated to explain Basically, we have a company and we want to buy the (companyname).com domain from the current owner.

My company has several trademarks registered to protect our company name and the logos. We would like to register the .com according to our company name, but it's taken. We do own the other domains though, including .net/org/info/us/biz.

The .com has had a "under construction" page up and running for over a year now, and nothing has happened. I've tried to email them and asked them if they are interested in selling the domain, but I've never heard back from the owner. It was recently renewed for another year, but nothing is being developed on the site.

Is there any way that we can claim this domain because of our Trademarks? I talked to our lawyers about this, and we've heard different opinions.

Any of you know what our options are? Any feedback is gladly appreciated, thanks in advance!

 

[Ronald Regging]

Unless your business uses a rather unique, brandable name (such as Google)... you know, something that you made up, your options may be fairly limited. The fact that they haven't developed it in a competing manner and/or haven't parked it with competing ads, gives them a bit of leverage. If the domain consists of a generic term, you're even less likely to have a right to it.

This is kind of the flip side of the coin here, and we'd probably need to know what the domain is in order to give a better opinion. I don't want to give any advice that may construed as "reverse hijacking" if indeed the domain is generic and is not infringing on your TM. Having a TM doesn't necessarily give you exclusive rights to a name.

Your options however, regardless of the situation are to:

Attempt to buy the domain.
Send a C&D to the owner.
File a UDRP/WIPO. WIPO
Do nothing.

 

[Skinny]

I guess it could help if you gave the name (shoot a PM if you wish to keep it private).

If there is a breach of the TM I'd have to ask this question:

Which came first. The registration of the .com version of your company name or the trademark of your company name

If the registration was before you trademarked your name then he got there first and there really isn't much you can do but try to buy it off.

Skinny

 

[Dave_Z]

IMHO, you might have to contact the other party and give a potentially high
figure to try to get their attention. If they still don't reply at all or they give a
figure that's almost equal to UDRP and attorney fees, then it probably makes
sense to take the UDRP route instead.

Other than that, there's no other way to wrest control of the domain name at
all. Good luck making the right decision.

 

[ThreeD]

thanks for the feedback to you all! I do currently not want to put the name up in public, but I can tell you that it's not a dictionary word, it's a name we made up. The domains were registered a few months before we registered our trademarks which makes it all more complicated.

I guess one of the things we could do is build up a really brandable product and launch it under the company name. That way we have a bigger chance of aquiring the domain at a later point, if the current owner hasn't sold the domain to us by then.

I will sit down with several people next week to discuss this matter, if we have to raise our bid, we'll do so. The question is how far we should go, the domain is not up and running and it has NO traffic. I guess it's the famous saying: It's worth what we're willing to pay for it

thanks again for the feedback, appreciate it!

 

[Dave_Z]

I guess one of the things we could do is build up a really brandable product and launch it under the company name.

If the registered trademark's date of first use predates the domain name, you
have one trump card. And that's if we're talking about the USPTO having fully
approved your registration to begin with.

Be ready to talk to a licensed, competent lawyer to review any and all facts
of your case if you've finally decided to go that route.

 

[accent]

The domains were registered a few months before we registered our trademarks which makes it all more complicated.

I read that to say that the other party registered the com before you got your trademark or used the name in commerce. If that is so, then game over, buy it from him if you can, if you cannot then work around as best as you can.

Although there have been some bad WIPO decisions the operative term is "bad faith". If someone registers a domain name in order to profit from your efforts then he is cybersquating. Otherwise people are free to use any name.

Two examples. RingoStarr.mobi was recently awarded to Ringo. It is obvious that anyone who regged that name would be using it to refer to Ringo.

It is a tired example but Apple Computer was free to use the name Apple to refer to computers despite the record label Ringo and his friends had previously trademarked. And neither had a problem from fruit growers. So the same name can be trademarked for many uses, as long as there is no confusion.

There is another point. It appears this guy had no knowledge of your business before you contacted him, so he apparently intends you no harm. If this is so, why do you even consider taking away by force his rightful property?

 

[Dave_Z]

why do you even consider taking away by force his rightful property?

What's that movie line? Nothing personal, just business?

Of course, that doesn't stop some people from taking things personally.

 

[ThreeD]

If the registered trademark's date of first use predates the domain name, you have one trump card. And that's if we're talking about the USPTO having fully
approved your registration to begin with.

Be ready to talk to a licensed, competent lawyer to review any and all facts
of your case if you've finally decided to go that route.

thanks for the reply Dave, we've contacted a few lawyers specialized on this kind of problem and they're looking into it.

Currently we want to know what our chances are of getting the domain name, even if the current domain owner isn't responding to our calls or emails. We've put up a pretty decent offer, but haven't heard anything.

I'll see what happens next week, but time is running :/

thanks again for your replies..

I read that to say that the other party registered the com before you got your trademark or used the name in commerce. If that is so, then game over, buy it from him if you can, if you cannot then work around as best as you can.

There is another point. It appears this guy had no knowledge of your business before you contacted him, so he apparently intends you no harm. If this is so, why do you even consider taking away by force his rightful property?

Most likely the current owner has no knowledge of our business (yet) because we're not big enough in that part of the world. However, this is not a matter of "taking" a domain by force. We've sent offers to the current owner, tried to call the phone numbers in the whois info, sent emails - we've heard nothing in return. The domain is not up and running, it has not been up for atleast a year, and it doesn't have any history.

We figured it was a good idea to contact a few lawyers specialized on this kind of problem and see what they tell us. I know the current owner doesn't have to sell the domain, and he can do whatever he wants with it, unless he makes money off of our product. As stated earlier, we have the .net/.org/.biz/.info/.us etc, only the .com remains.

We'll wait and see what next week brings before we make any further decisions. Thanks for your reply..

Have a great weekend all!