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Domain Trademark Question

Located in Legal Discussion started by Snailz, Sep 11, 2018.

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  1. Snailz

    Snailz Restricted

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    Hello,

    For a while I have had a personal site with a domain name(it still is a personal site to this day) and in the last two years or so a startup has popped up with the same name. I have had my website since 2015(provable with archive.org) and the startup according to public files was created in July of 2016. Here's where it gets more complicated. In the past year for whatever dumb reason I registered the same name with 3 more different tlds. After that I reached out to the company offering to sell all of them for an insane amount of money(where talking xx,xxx for what is worth at most low xxx) once again, for what ever dumb reason I had in my mind. Also, the company does not seem to have any interest in claiming a trademark. They have not registered one and don't have a TM next to there name. I know most likely no one here will know the answer but I figured I would ask anyway.

    Thanks for reading,
    ~Snailz
     
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Ask what?

    Surely you realize that you have not posted a question.
     
  3. Snailz

    Snailz Restricted

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    Oops. Just read over my post and your right. What I mean to as is can they take my domain away? Would they win a law suit?
     
  4. MadAboutDomains

    MadAboutDomains Active Member VIP ★★★★★★★★★★

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    No it's unlikely that they would win a UDRP against your name, even if you have decided to offer it to them. You can't have registered the name originally in bad faith because they didn't exist when you registered it. Also your registration of the other names is legit because you have the other domain that matches, there's nothing wrong with claiming the matching domains in other tlds when you have a genuine personal site.
     
  5. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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  6. MadAboutDomains

    MadAboutDomains Active Member VIP ★★★★★★★★★★

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  7. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Well, if they didn't have a trademark, they wouldn't be suing over one. The overall point is that the gopets case is typical of situations where someone has a domain name, someone else develops a trademark interest, and then the domain registrant goes after additional names for a purpose other than simply extending their original use of the first one.

    These things usually tend to turn on the "dumb reason" part than the specific sequence of events.
     
  8. MadAboutDomains

    MadAboutDomains Active Member VIP ★★★★★★★★★★

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    Indeed. The OP mentioned that the startup doesn't have a trademark, so they couldn't sue over it anyway, whether it's the original domain or the additional ones. Unless they have a service mark, I suppose.
     
  9. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    I do not know what leads the OP to that conclusion.

    The OP just says that they have not applied for registration of one, and do not use the "TM" notation. Neither of those things is required in order to have a trademark.

    If they are using a distinctive word/phrase/string/whatever as an indication of the source or origin of their goods or services, then they "have a trademark".

    To use my tired analogy here... If you see me walking down the street with a furry animal on a leash that barks, you don't go to the county pet licensing office to figure out whether I have a dog or not. I HAVE the dog. It's right there, on the end of the leash, barking. Whether I have registered the dog with a government office is a different question.

    The converse works as well. If you go to the pet licensing office, look up my name, and find that I have a dog license, then does that mean I have a dog? No, it doesn't mean that either. I might have a dog license, but my dog might have died last week.

    Honestly, if domainers in general could wrap their heads around those two principles, it would be a good start on answering a lot of these questions.

     
  10. cooljub

    cooljub Established Member

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    So this would be what's called a common law trademark? Strong on it's own, but better backed up by registering?
     
  11. Snailz

    Snailz Restricted

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    In this case the purpose of registering the additional names is to extend the use of the first one. What I did was I registered somename.net. Then I registered somename.org, somename.info, etc and they all point to the same website as somename.net which was registered before the company initially filed their creation paperwork.
     
  12. MadAboutDomains

    MadAboutDomains Active Member VIP ★★★★★★★★★★

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    Yup. That's why I'm trying to look at the differences between your situation and the case highlighted by @jberryhill.

    From what I can deduce from the highlighted case for gopets.com, your additional domains could well become a cause for dispute in isolation of your original registration. If the entity in question alleges that the additional domains that you registered were registered since and because they established their business so that you could bolster your position in order to sell the original domain to them, then if they decided to take action it could well go the same way.

    On to the differences between your situation and the highlighted case - It looks like there were additional forces at play in that case, such as that the domain registrant had declined significant sums of money ($40,000 USD) to allow the claimant buy the original name and then increased their demand to $5 million, it was also alleged that the defendant had threatened them with what would happen if they didn't buy the name (using SEO metadata against them, loss of business, confusion etc).

    How we're supposed to know whether you could prove otherwise is an entirely different matter. Personally I think that if you have a genuine website that you already own and run and you want to buy names that directly compliment it or to protect your existing website, this sounds legitimate to me, regardless of whether you have considered selling it. It's like saying that I can't buy a car and do it up because I might want to sell it... it's not wrong. Registering a domain, using it legitimately and registering other domains to protect it is legitimate. However, if the intent was different to this, surely they would have to prove otherwise.

    Please tell me if I'm right/wrong :pompous:
     
    Last edited: Sep 21, 2018

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