instagram and .com domain name TM issue?

[Dr. Anthony]

I own the .ca domain and its also my instagram handle. A while back, I had a guy message me on IG asking ot buy my instagram handle. (we're both small home based businesses). I said no.

Fast forward to now, he sent me a message saying he's in the process of trademarking the domain and will have instagram take the username.

So my question is, Is that possible?
Also, he owns the .net. The .com domain is available for sale by a reseller.

If I buy the domain, and he actually does get a TM, can he take the domain name away?

2 words. 1st is automotive (Non trade mark) related. the 2nd word is a normal dictionary word.

 

[Dr. Anthony]

I forgot to add. We're both in different countries. I'm in canada, he's in the US if it makes a difference

 

[Compassion]

Sounds like he is blowing hot air at you and hoping his intimidation will lead you to give him the handle.

Being two generic words and the fact you are using them in good faith, I don't see IG being able to take it from you nor do the .com or .ca seem to be in jeopardy.

Even with Automotive _______ as a trademark that is different than Automotive________ .com

I have a neat Automotive two word com . . . . Database.... needing proper development. net and ca are available, I see IG is being used. Seems myself and the IG handle each could live happily with our own distinct online presence.

 

[Dr. Anthony]

Sounds like he is blowing hot air at you and hoping his intimidation will lead you to give him the handle.

Being two generic words and the fact you are using them in good faith, I don't see IG being able to take it from you nor do the .com or .ca seem to be in jeopardy.

Even with Automotive _______ as a trademark that is different than Automotive________ .com

I have a neat Automotive two word com . . . . Database.... needing proper development. net and ca are available, I see IG is being used. Seems myself and the IG handle each could live happily with our own distinct online presence.

Thanks for the info.

To clarify, i meant it was an automotive related first word. Not the actual word Automotive
its a sort of synonym for a car, and the 2nd word is unrelated, but a normal every day dictionary word

 

[Dr. Anthony]

anyone else have anything to add?
Just trying to see what route to go

 

[branding]

Just ignore him. Even if he started trading under that name before you did, you're both in different countries, probably targeting a whole different clientele.

Even if he's right, registering a TM now doesn't make a difference. Don't worry about it unless Instagram contacts you which is judging by the data you provided unlikely.

 

[Dr. Anthony]

Just ignore him. Even if he started trading under that name before you did, you're both in different countries, probably targeting a whole different clientele.

Even if he's right, registering a TM now doesn't make a difference. Don't worry about it unless Instagram contacts you which is judging by the data you provided unlikely.

Thanks, We essentially both do the same thing. (auto parts) my biggest market is in the US, I sell in USD. (currently mostly ebay) The .com domain is available from another domainer for a couple grand. Do you think I'd still be ok if I purchased it?

 

[BrandCollectors.com]

I own the .ca domain and its also my instagram handle. A while back, I had a guy message me on IG asking ot buy my instagram handle. (we're both small home based businesses). I said no.

Fast forward to now, he sent me a message saying he's in the process of trademarking the domain and will have instagram take the username.

So my question is, Is that possible?
Also, he owns the .net. The .com domain is available for sale by a reseller.

If I buy the domain, and he actually does get a TM, can he take the domain name away?

2 words. 1st is automotive (Non trade mark) related. the 2nd word is a normal dictionary word.

selling ig usernames are not allowed by ig tos. anyone who has tm can get your handle.

 

[branding]

Thanks, We essentially both do the same thing. (auto parts) my biggest market is in the US, I sell in USD. (currently mostly ebay) The .com domain is available from another domainer for a couple grand. Do you think I'd still be ok if I purchased it?

It really depends on the name. I'm not a lawyer but generally speaking whoever started trading under that name first established a TM, albeit unregistered.

Like I said, look into when he started trading under that name.

As for the .com domain. Would need to have more details. If you can afford some legal council I would recommend mr @jberryhill who is a well respected member (and a lawyer) of this forum and has a lot of knowledge about situations like this. It might be worth it to contact him for a consult.

 

[branding]

selling ig usernames are not allowed by ig tos. anyone who has tm can get your handle.

Selling isn't allowed I agree. Holding a TM doesn't mean much though.

A lot of deciding factors. Without all specific data it's hard to judge.

 

[Dr. Anthony]

Thank you guys,
I appreciate the bits of advice! I wish I could be more specific with names, but it obviously wouldn't be a good idea publicly. : )

 

[capybara]

They give usernames basing on US-registered trademarks easily...when their users are obviously inactive or placeholder accounts. Won't do that to a trustworthy live account in good standing. Make sure you have saved all the emails including the threat just in case.

 

[Dr. Anthony]

They give usernames basing on US-registered trademarks easily...when their users are obviously inactive or placeholder accounts. Won't do that to a trustworthy live account in good standing. Make sure you have saved all the emails including the threat just in case.

Thanks! I do use it, I was going to start using it for business but I just post personal pics now. So you're saying if I continue to use it this way, they can't do a thing? The messages he sent were through instagram. I have screen shots just in case.

What are your thoughts of purchasing the .com domain? Currently held by one of the bigger domainers . I own the .ca

 

[capybara]

That is my experience from working in marketing-SMM agencies (I am a web developer): it is quite usual that when agency takes a client's profile under management, there are possibly better/exact match handles so often they would try to request for them; however Instagram, Facebook, Twitter won't ever take away profile handles from what looks like real users even in favor of multiple trademark holders. I think in case of a world-class TM they probably would, but Coca-Cola et al. of course have their handles already.

What are your thoughts of purchasing the .com domain?

As a domainer, I'd say of course you need the .com domain I myself have my eyes on a domain I'd like for my project, quite expensive, I tried to lowball the owner politely but he was firm; so its in my plans whenever I have enough cash. But if your own websiteis not your most important sales channel, and also depending on the cost, maybe you don't need it...

For the protection purposes? You said trademarking the domain – if that were his exact words it is of course nonsense, one can't trademark a domain without owning it (also, having ghfdsf.xyz trademarked would give grounds to claim ghfdsf.xyz handle in social media, or with the dot subsitutes (-, _) depending on the available characters rules, but not ghfdsf without .xyz, since it wouldn't match the trademarked word). He could try to trademark the word, but being "in process" would mean an application pending for months before it can be granted; you need to check USPTO TESS for such application and then maybe check again in a few months. Since you say you're in the same business and also sell to the same market, you'd have reasons to oppose such trademark application. Now that would be a truly legal question.

However most likely it is nothing but an idle threat.

 

[Windoms]

https://help.instagram.com/101826856646059

What if an Instagram account is using my registered trademark as its username?
Trademark violations may involve using a company or business name, logo or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation.

What is not a violation?

Using another's trademark in a way that has nothing to do with the product or service for which the trademark was granted is not a violation of Instagram's trademark policy. Note that Instagram usernames are provided on a first-come, first-served basis and may not be reserved.

 

[Windoms]

https://help.instagram.com/2039132876317734?helpref=page_content

Can I report a username on Instagram for infringing my trademark?
Usernames are generally claimed on a first-come, first-served basis. This means that you may see an Instagram account that includes your trademark in its username. While there may be cases where this type of use can be reported for trademark infringement based on the context of its use, please note that not every use of your trademark in a username is necessarily a trademark infringement. The same word used in a different context may not violate your trademark. See “What is trademark infringement?” to learn more.

If you believe that a username infringes your trademark rights, you may want to contact the responsible person and try to resolve your issue with them directly. If you’re sure you want to report a username on Instagram that you believe infringes your trademark, you can do so by completing this form.