Interesting Fedex I got today...

[Monolith]

I snapped the domain "relacore-for-stress-relief.com" at the end of December (it had a bit of traffic). On January 23rd, i got a letter in the mail asking me to hand over the domain because "Relacore" is trademarked.

Included with the letter was a photocopy of the US patent office registration for the relacore trademark. Interestingly, it's listed as having been registered on January 10th, 2006... 15 days after i registered the domain in question.

So, my question is this: Are trademarks retroactive? Whether or not they are, any suggestions as to what i should do?

The letter was rather amicable, and included a form for me to sign and return which states i wont be held liable for any damages if the name is turned over within 10 days.

 

[robertjr]

Word Mark RELACORE
Goods and Services IC 005. US 006 018 044 046 051 052. G & S: Dietary supplement namely for weight control and overall well-being. FIRST USE: 20020710. FIRST USE IN COMMERCE: 20020710
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Design Search Code
Serial Number 76620273
Filing Date November 12, 2004
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition October 18, 2005
Registration Number 3039570
Registration Date January 10, 2006
Owner (REGISTRANT) CARTER-REED IP HOLDINGS, LLC LTD LIAB JT ST CO NEVADA 1000 EAST WILLIAM STREET, SUITE 204 CARSON CITY NEVADA 89701
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record James A. Gale
Prior Registrations 2702840;2801458
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Not claiming to be an expert or anything, but I think "first use" would prevail.

jberry???

 

[Stephen]

I agree with RobertJR..

I would simply hand over the domain.

The pain you would have to go through to keep the domain wouldn't be worth it..

 

[DNQuest.com]

First use will prevail. It is very obvious to grabbed the domain to cash in on someone else's name. You have little recource at this moment.

 

[Dave_Z]

Same as everyone else here said. The problem is that the domain name was
registered after the trademark was filed.

I wanted to check its TARR/TESS status but it's "overloaded" at the moment.

 

[fonzie_007]

If anything, you could potentially explain that you are willing to hand over the domain, but that it would be a nice gesture on their part if they were to reimburse you for the fees you paid for backordering the domain. Don't get greedy and ask for money to profit from the transaction though. I would guess they should reimburse you for your costs.

 

[DNQuest.com]

AAAAAY.....

Fonzie, asking for money (regardless of your own reasoning to make yourself feel good), is instant bad faith. It is a well known TM and his hand was caught in the cookie jar. And the TM holder does not have to do anything to reimburse you (that's sometimes called cybersquatting). Do companies do it, yes will offer to pay the registration fees, should you negotiate, not on a domain like this one.

 

[fonzie_007]

It doesn't necessarily prove bad faith, especially if the registrant did not know it was TMed. I'm just saying that you tell them you are happy to turn the domain over, you did not know it was TMed (if indeed this was true), and that getting the domain cost you $X.
If you did know the domain was TMed, I would not ask for anything--just hand the domain over.

 

[dreaminginspiration]

hand over to me if you want, they have a US patent and im not in the US so no problems

 

[fonzie_007]

The problem is that even if he does hand it over to you, he is liable to the company for damages.

 

[IAmAllanShore]

hand over to me if you want, they have a US patent and im not in the US so no problems

:lol: :lol: :lol:

Bottom line: unless you're attached to the damn thing or getting great results, why not let it go? Is it worth any potential fight?

-Allan

 

[godinu]

in case anyone wondered, the date of registration of a patent/TM is less important than when they first used the term. Since Relacore existed before the domain did, they would certainly win any legal case (even though the just filed for TM).

 

[shanee86]

Did you all see this "it's listed as having been registered on January 10th, 2006... 15 days after i registered the domain in question." I am not sure but I think that says he had domain before they registered trademark. I am not sure if that means anything but just wondering? I know if I had a domain since like 2k and some company registered a trademark in 2005 I would say no way but that is me.

 

[Monolith]

I handed it over. Woman i talked to on the phone was very amicable about it. I humbly asked if i could be reimbursed the $nap fee, but they declined. :p

 

[fonzie_007]

I humbly asked if i could be reimbursed the $nap fee, but they declined. :p

Pretty interesting... You had good will but they didn't.

 

[labrocca]

F'em...you should have just held the name and done something non-commercial with it. Write like 500 words about their product with a couple links and BAM....you ain't squatting or using the name in bad faith.

 

[DNQuest.com]

It doesn't necessarily prove bad faith, especially if the registrant did not know it was TMed. I'm just saying that you tell them you are happy to turn the domain over, you did not know it was TMed (if indeed this was true), and that getting the domain cost you $X.
If you did know the domain was TMed, I would not ask for anything--just hand the domain over.

Just so I get this straight...

You are claiming ignorance and your defense????

And yes, if you try to sell a TMed domain to the TM holder, that is bad faith... It is the very essence of cybersquatting, to earn revenue from a TMed domain.

As far you asking for money if you did or did not know, it doesn't matter to the TM holder, you are trying to make money off thier TM.

Labrocca - I'll forgo the "inventing a reason to use the domain in hopes of getting money out of the TM holder" speech... but I will say, in this case, he already was contacted and that statgey won;t work because it would be after the fact of initial contact. I am sure a panel would see right through that.

 

[fonzie_007]

DNQuest, are you saying there is no possibility that someone can reg or get a domain without knowing it is subject to TM? Just because you ignorantly have a domain that is subject to TM does not prove bad faith. It may imply bad faith, but it certainly does not prove it.

 

[DNQuest.com]

Using the examples sighted above, it was stated that it is is ok to ask for money if you did not know the domain was TMed... that means it is ok to ask for money if you claim ignorance (meaning you did not know). They company informed you, at that point you are no longer ignorant of the TM. First, in this case, it is clearly registered knowing full well it is a TM. Secondly, if ignorance was ever accepted in a WIPO or court, the whole freaking domain world would become ignorant, trust me on that. Third, With what was given here, it is easy for a panelist to see the registration after first usage, then you asked for money.. in reality, that is bad faith. We have to go by facts here.

 

[labrocca]

Just so I get this straight...

You are claiming ignorance and your defense????

And yes, if you try to sell a TMed domain to the TM holder, that is bad faith... It is the very essence of cybersquatting, to earn revenue from a TMed domain.

As far you asking for money if you did or did not know, it doesn't matter to the TM holder, you are trying to make money off thier TM.

Labrocca - I'll forgo the "inventing a reason to use the domain in hopes of getting money out of the TM holder" speech... but I will say, in this case, he already was contacted and that statgey won;t work because it would be after the fact of initial contact. I am sure a panel would see right through that.

I NEVER said he should try to get money out of the TM holder. He could use it for MANY non-commercial things that would fall under fair-use. Just giving it to them isn't imho the best thing to do. If you register a domain and it's a TM the real problem arises when you use it for profit...hence you should simply make a small page there and have nothing commercial on it at all. Write a poem about the company.

 

[Element]

If you reigstered it, before they trademarked it, you should be able to keep it.

 

[DNQuest.com]

If you reigstered it, before they trademarked it, you should be able to keep it.

Element, please don't post here in legals until you learn something....

Labrocca - I understand what you are saying, but even you have to realize that doing it AFTER the point of contact will bring a suspicion trying to use the "good faith" arguement after it has already been astablished that it wasn't. Just to show you I know your point of view, I will share this with you. I own a direct domain that exactly matches a well known TM. I have successfully kept the domain against 2 TEAMS of lawyers because I have honestly used the domain in good faith. It came to a point where I was granted permmission (in an indirect way) and was even given pictures to add to my site directly for the TM holder.

It was someone else who suggested to get money from the TM holder, not you. I was trying to roll everything into one

DNQuest, are you saying there is no possibility that someone can reg or get a domain without knowing it is subject to TM? Just because you ignorantly have a domain that is subject to TM does not prove bad faith. It may imply bad faith, but it certainly does not prove it.

Ok, this thread was started with a specific domain listed.... please read that domain and tell me it could ever be registered without knowing the TM. And yes, the TOS of registrars says it is your responsibility to not register domains with TMs in them.... Here is enoms TOS:

>>>
NOT INCLUDED IN THE SERVICES: Without limitation, the following are not included in the Services: We cannot and do not check to see whether the domain name(s) you select, or the use you make of the domain name(s), or other of the Service(s), infringes legal rights of others. It is your responsibility to know whether or not the domain name(s) you select or use infringes legal rights of others. We might be ordered by a court to cancel, modify, or transfer your domain name; it is your responsibility to list accurate contact information in association with your account and to communicate with litigants, potential litigants, and governmental authorities. It is not our responsibility to forward court orders or other communications to you. We will comply with court orders unless you contact us to contest the order.
<<<

So yes, it is your responsibility to know is the domain in TMed or not, so you just register domains willy nilly and them claim "you didn't know"

 

[AdoptableDomains]

If you reigstered it, before they trademarked it, you should be able to keep it.

The TM registration isn't even required to have a TM. It only formalizes it and mkes it easier to enforce and collect damages. The first medicine bottle they printed and marketed basically protected their name. A registration only changes it from "TM" to (R) for Registered Trademark. According to a previous posting, first use was July 10, 2002.

FIRST USE IN COMMERCE: 20020710

I NEVER said he should try to get money out of the TM holder. He could use it for MANY non-commercial things that would fall under fair-use. Just giving it to them isn't imho the best thing to do. If you register a domain and it's a TM the real problem arises when you use it for profit...hence you should simply make a small page there and have nothing commercial on it at all. Write a poem about the company.

If you have no commercial use, then why keep it? For the priveledge of paying renewal fees?

F'em...you should have just held the name and done something non-commercial with it. Write like 500 words about their product with a couple links and BAM....you ain't squatting or using the name in bad faith.

Putting a couple links, assuming they are Paid links, would then make it a commerical use.

hand over to me if you want, they have a US patent and im not in the US so no problems

Just because you aren't in the US, doesn't mean they can't go after you. Most countries have treaties that honor Trademarks of other countries, registered or not. They may also have an unregistered, but legal TM in your country.

I handed it over. Woman i talked to on the phone was very amicable about it. I humbly asked if i could be reimbursed the $nap fee, but they declined. :p

Nice try on the fees, but probably a very good decision.

 

[theSun]

Just hand over, no one will type in that domain, honestly.

 

[labrocca]

Glad to hear DNQ that you are not totally against owning a TM domain under fair-use. I wasn't sure you were into that. I have a few as well...I have actually an interesting story about ColecoVision...I owned colecovision.com and hasbro allowed the TM to fall away and so I became the TM holder simply because I was using the name for commercial purpose before anyone else. So I sold the rights. seriously...

Anyways...I just think his only commercial use was SEDO parking but that can be argued it was a temporary page until he found a host. IMHO he could argue this and keep the domain ONLY to tick them off and maybe force their position...it's a bullshit name anyways and value imho is low..unless of course there is solid traffic which I just doubt...