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.

 

[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...

 

[DNQuest.com]

Labrocca, that is why I finally decided to share that tidbit with you. But if you do a search here for "celebrities" or "fansites", you will see the numerous times I have helped out people showing the correct way to own certain domains. I even made list of do's and don'ts when owning such names. I do have several domains I run under "fair use", but the difference bewtween me and many other people is that I actually use them in good faith and not just saying it to hopefully get money from the TM. Most people tend to lean towards the latter.

 

[Monolith]

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

Yeah... hoping people were going to type in the domain wasnt the point.