How to claim a domain containg your TM

[foka]

I have found a lot of information and posts on "How to respond to someone claiming a domain based on a domain". But nothing about "How you can file a claim for your own TM infrengement.

I am in a situation right now, where some one have registred .NET, .ORG and some .COMs containing my TM string.

TM is applied in Pakistan for 1.5 years now, and the domains are registered about 6 months in past, and some in this month.

 

[Peter]

The ussual first step is to send a letter requesting the hand over of the domain names. You would be best getting a lawyer to write this out and then send it to the registrant.

If you have no joy with that then the only other choice is to go to a wipo which is costly.

 

[DNQuest.com]

You also have the option of taking them to court too.

 

[Ronald Regging]

One thing to note is that the domains must be registered and used in a confusingly similar way to your TM. You must be able to show that the person registered the domain in bad faith and has no legitimate right to use the domain.

Basically, check the other sites, if they appear to be sites for legitimate businesses that have nothing to do with your industry, you probably stand absolutely no chance of winning a WIPO. They can claim they were not aware of your TM at the time of registration and since they aren't in a competitive market, it can not be claimed that it is confusingly similar.

This has happened many times in the past where you see domains owned by small companies even though a huge corporate giant has TMs on the name. I.e. Adsense.com It is important to note that TMs only apply to a specific market. I.e there can be 100 companies with the TM Dell, as long as they all operate in completely non-competitive markets. A TM only garuantees your rights within that market and since the Internet contains companies from every market, you can bet that even if you own a TM, somebody else either owns the same phrase, or has an equally legitimate claim to the domain.

 

[cjcjcj]

(I think this is a good question in continuation of foka's but I don't want to hijack his post so ignore me if so)


What if the trademark had been registered for 6 months as a .com, and the .net and .org version were just parked and owned by someone else, but had been parked for 12 months - so 6 months before my trademark was in place and before I owned the .com domain.

Since my site came into play could they be seen to be profiting off my trademark as it is developed and trading, whereas they are just parked with no trademark.
Could I have a chance of getting their names?

 

[Ronald Regging]

Doubtful. You have to prove that they registered the domain in bad faith. If your TM didn't exist at the time then they couldn't possibly have registered in bad faith. This also raises a whole other issue which is known as Reverse Hijacking... Where people would go out and register a TM for a domain that was already owned, but they wanted, and then they would try to claim that since they had a TM, they were entitled to the domain. I dont think you'd have much of a chance.

 

[IAmAllanShore]

What is it that you are claiming to be your TM?
-Allan

 

[RJ]

As filth said, send a cease and desist letter first requesting they stop using the name and turn it over to you. It wouldn't hurt your chances if you volunteered to pay their expenses for the domain.

If they don't comply you can file a disputeUDRP dispute against them with one of the ICANN approved resolution providers. Check here, it links to them. http://www.internic.net/faqs/udrp.html

NAF and WIPO are the two main ones for US based .COM disputes.

 

[foka]

Thanks every body for showing me the way ahead.

In my case, the person is using it to sell the same services that i am selling, and it is very clear that domains are registred in bad faith.

If they don't comply you can file a disputeUDRP dispute against them with one of the ICANN approved resolution providers. Check here, it links to them. http://www.internic.net/faqs/udrp.html

NAF and WIPO are the two main ones for US based .COM disputes.

Thx a lot, i will looking in to that, and following it. (they have allready denied to stop using the domains or what ever they are practicing on it).

What if the trademark had been registered for 6 months as a .com, and the .net and .org version were just parked and owned by someone else, but had been parked for 12 months - so 6 months before my trademark was in place and before I owned the .com domain.

in view of the research i have done recently, i see no chance for you to get these domains by law.

 

[Dave_Z]

TM is applied in Pakistan for 1.5 years now, and the domains are registered about 6 months in past, and some in this month.

UDRP will likely be your best bet if the C&D letter doesn't produce any reply.
Getting monetary damages will be tough (even impossible), but grabbing the
domain names can be done if that's enough for you.

 

[realestatepro]

TM's and domains are still pretty gray area. If you have something generic then protection is nill but if you have something clearly different or specific. But by the sounds of it bad faith maybe your best bet but it would still be an interesting one.