Domain Trademark Question

[Entrepreneur888]

I had a general question about trademarks I was wondering if anyone could answer,

I recently purchased a domain and parked it, its a 5 letter name that can be used as an abbreviation for a number of different companies and organizations(5 to be exact) (1 in the states and 4 in different countries)

Now I received a cease and desist letter from the American company with the same name.

Does the company that sent me the letter really have the right to this domain name, even if is an internationally used acronym for 5 different companies?

I hope this is enough information, For obvious reasons I cant post the name of the domain albeit be used against me in the future,

Thanks in Advance,

JR

 

[enlytend]

A lot rests on the details -

- IS it a registered tm?
- Are they well-known by that acronym? (Even if it's just within that industry)
- Have they established use of it in their business?
- What line of business are they in, and are the ads on your parked page for the same kind of goods and services?
- If it's a registered tm: What classes does it cover and are the ads on your parked page for things which fall into that class?
- Are you displaying ads pointing to their competitors?
​

Again, no way anyone can answer this without knowing the particulars, but generally speaking, the more "yesses", the stronger their claim.

 

[Entrepreneur888]

Yes it is registered in the US

Yes they are known by that acronym

The cosmetic Industry, the ads are not currently for this or for their competitors,

I'm not familiar with registered trademark classes. Ill have to read up on that.

I think you may have answered my question already,

Do you know if i can still sell it too the other companies with the same acronym ,even after the cease and desist letter?

Its got some decent stats as a domain name other than the possible trademark infringement..

Regards,

JR

 

[Sparhawke]

Entrepreuneur brings up a valid and valuable point, and this is also a question I would like answered, it is actually related to the opening question...

If 5 companies all hold similar claim over a domain and one decides to claim it before the others realise with a C&D demanding that you hand it over to them are you quite within your rights to figuratively throw it up in the air with an closed auction between all five companies that have equal claim?

Or are you forced to simply hand it to the vulture who spotted it first?

This is the kind of grey area I do not generally like, all five have equal claim as well as the original registree, not just one so why not simply do it in the most democratic way and let the person wanting it the most claim it?

I also understand that this could lead to many other problems of people grabbing domains that have many different holders so don't need to be told that I overlooked that...

 

[DN BROKER]

Yes it is registered in the US

Yes they are known by that acronym

The cosmetic Industry, the ads are not currently for this or for their competitors,

I'm not familiar with registered trademark classes. Ill have to read up on that.

I think you may have answered my question already,

Do you know if i can still sell it too the other companies with the same acronym ,even after the cease and desist letter?

Its got some decent stats as a domain name other than the possible trademark infringement..

Regards,

JR

Very good points!

 

[enlytend]

all five have equal claim as well as the original registree,

Not necessarily - it depends on whether or not you're stepping on any toes and exactly whose toes you're stepping on.

For one thing, they could be for five different classes of goods and services. XYZQJ that sells electronics and XYZQJ the restaurant chain, XYZQJ t-shirts, XYZQJ employment agency and XYZQJ bathroom fixtures. They can all co-exist. If you come along and register XYZQJ and don't use it for anything related to electronics, the food industry, apparel, employment or plumbing fixtures, you're probably* OK ...

... unless XYZQJ is an extremely well-known brand.

Or are you forced to simply hand it to the vulture who spotted it first?

If they registered a tm they've established their use of the word as their brand, paid the hundreds of dollars in fees for each class of goods and services it applies to, and probably hired a lawyer to get it all done properly. Someone comes along pays $8 to register the same/similar brand name, uses it in a manner that takes advantage of the similarity and starts siphoning pocket change from their hard work ... reality check: who's the vulture in that scenario???

 

[Name Trader]

As long as you are not infringing on their trademarks, you have every right to dispute the C&D with a good chance of winning. I wouldn't run off and sell the domain to anybody else until you have worked out your problems with the C&D. Because you would still be held liable, and it just complicates matters if you no longer own the domain.

 

[Entrepreneur888]

Ok Thanks for all the Helpful information, Two other points i would like to make,

The domain has a whoisguard on it, the C&D letter came through to a temp email address. They were not sure who the owner was.

The second point is that i am not an American resident or citizen and it is an American company sending the C&D,

And a point i was not aware of, I can still be held liable after i have sold the domain to someone else?

Once again, Thanks everyone for your input

Entrepreneur

 

[enlytend]

Selling the name would be deriving more profit from the name, not ceasing and desisting. Agree with stub - resolve the C&D first.

If you're not using it in an infringing manner (and only a lawyer who knows the details would be qualified to make that call) then stand your ground and send them a response.