NameSilo

My domain is now trademarked by somebody else....

Labeled as question in Legal Discussion started by GreenGambler, Apr 25, 2018.

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  1. GreenGambler

    GreenGambler Active Member VIP ★★★★★★★★★★

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    Hello,

    I am a part-time painter/artist. I've had my domain name for 8 years now and have always used it for either my artwork website or to forward to my artist Facebook page.

    About 2 years ago an import company registered my domain name as their trademark. They now sell branded art supplies on Amazon, eBay, Walmart, using my domain name as their brand.

    I never filed for a trademark but I have always used the domain name, never had it parked and it's always been related to my artwork.

    I'm just wondering if this companies brand continues to grow, is there a chance they can force me to give them my domain name?

    Thanks for your help,
    Rich
     
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  2. Jevsim

    Jevsim Established Member

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    I think that they might contact you soon to buy the domain from for a nice sum ;)
     
  3. wayne wooldridge

    wayne wooldridge Interception VIP

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    That would be nice, but it doesn't always work out that way. They could just as well sue him for the domain. It's happened many times in the past.
     
    Last edited: Apr 25, 2018
  4. Kingslayer

    Kingslayer Active Member VIP

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    Just don't approach them and don't type the domain on here or anywhere else publicly, stating it's your domain and you know about their trademark.

    Since you owned the domain long before the trademark, i don't believe much can be done (unless they really pushed it), but clearly you don't own the domain 'in bad faith'.

    Best thing for you (as the owner of the domain) is just forget about it, you don't know anything said company or their trademark.
     
  5. BaileyUK

    BaileyUK Established Member

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    If you can show all your pre-dated web material and usage, I don't see you having any problem. 8 years of historic, predated usage is a lot for any Adjudicator to ignore. Check what classes they have filed under. It is not as if you didn't show due diligence when you started to use the domain.

    What brought the trademark to your attention ?? lots of companies will place 'TM' in their headings without ever having registered the Mark.

    I Personally have (and still do) hold plenty of dotcoms with subsequent trademarks, never any problem.

    Lets note they didn't register YOUR domain as a TM , just the same word(ing) If the company concerned has spent much (time or money) on their identity, then you can pretty sure they already know about you anyway
     
    Last edited: Apr 25, 2018
  6. GreenGambler

    GreenGambler Active Member VIP ★★★★★★★★★★

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    I've been contacted on Facebook a few times now by their customers wanting to know where to find my company website. At first I was like, "I've never heard of that art supply company", after the third message I decided to do some research.
     
  7. BaileyUK

    BaileyUK Established Member

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    And a trademark can only be registered in certain classes, Have you checked the Classes and description of usage ??

    it could be a trademark purely for the importation of certain goods. If you want me to have a private look PM me the domain, nothing will go on the board unless you post
     
    Last edited: Apr 25, 2018
  8. Jevsim

    Jevsim Established Member

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    1. XYZ person registered a trademark for the CryptoWorld brand;
    2. XYZ person will request the ownership of the CryptoWorld.com domain from a previous owner.

    Does it work this way? I'm not sure that we can get any domain for just registering a similar trademark.
     
  9. pinkdragon

    pinkdragon Established Member

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    As far as I can see on Trademarkia, they just applied for TM, and at this moment, they don't own it.
     
  10. Dave

    Dave Top Member VIP ★★★★★★★★★★

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    I am sure you have nothing to worry about. The domain registration pre-dates the trademark, just make sure you don't use it in bad faith or actively approach them to try and sell it.

    @jberryhill is the guy who will really be able to provide a much better answer.

    Thanks
     
    Last edited: Apr 25, 2018
  11. mr-x

    mr-x Acme Domains Gold Account VIP ★★★★★★★★★★

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    1) I'm not a lawyer.

    2) My understanding, TM is from first use. So you may have a common law trademark that is being infringed.

    3) TM's require maintenance. That includes notifying companies, people that infringe in the mark.

    Call a lawyer (TM)
     
  12. BaileyUK

    BaileyUK Established Member

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    I've done the basics and replied, I'm sure it will help
     
  13. GreenGambler

    GreenGambler Active Member VIP ★★★★★★★★★★

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    Yes you did. I really appreciate your help, you are awesome!!

    Thanks to everyone who chimed in, I'm grateful to be part of such a knowledgeable community!
    -Rich
     
    Last edited: Apr 25, 2018
  14. GreenGambler

    GreenGambler Active Member VIP ★★★★★★★★★★

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    double post on accident - removed
     
  15. Dotword

    Dotword Established Member

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    There is something called Reverse Domain Hijacking which occurs when a trademark owner attempts to secure a domain name by (wrongly) claiming cyber-squatting.

    If you read the wikipedia article (https://en.wikipedia.org/wiki/Reverse_domain_hijacking) you will find the following:

    And ...

    o Your registration predates any trademark of the complainant.
    o You have no history of bad faith towards the complainant.
     
  16. BaileyUK

    BaileyUK Established Member

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    Post deleted.
    I forgot I said no further comment from me
     
    Last edited: Apr 25, 2018
  17. ikhub

    ikhub Active Member VIP

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    If you are using the domain long before they applied for trademark, it shouldn't be an issue at all. DO NOT try to contact the business, if they ever contact you, you can reply back after due consultation with experts.
    Archive your current pages in archive.org (Try searching for your pages there, if it does not exist, there will be option to save it) and archive.is (you can jut paste any url and ask it to be archived), this will help you if any legal matter arise.
     
    Last edited: Apr 26, 2018
  18. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    You will be fine, you owned the name long before they filed the TM, and you have been actively using the domain. They can come to you but they will have to buy it from you.

    They wont win though, he owned the name long before the TM.
     
  19. anantj

    anantj Active Member VIP

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    If you feel that your own common mark and brand is being diluted, you could, at a not insubstantial cost, attempt to take legal action against them!
     
  20. frank-germany

    frank-germany F1lter.com xpired domain search engine Gold Account VIP

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    there is no need for him to attack those guys
    in case the classes are not same as his


    don't react to 3rd party inquiries for the other guys services
    and don't list anything related to their trademark on the page
    which might be difficult

    as long as the trademark is not registered but just approved
    there should be an easy way to comply

    but for that you need lawyers help you

    if you don't want to sell them your domain later on
    that's what you want to do


    --
    no legal advice I am not a lawyer
     
  21. CryptoCannabis

    CryptoCannabis Upgraded Member Gold Account

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    Hey green pm me if youd like as i have had experience with exactly this kind of case.

    Remember a trademark is two things : the mark and the use in commerce.

    If your use in commerce is clearyl different then theirs, you have nothing to worry about and can actually even probably register a TM . Someone above mentnioned the reverse domain thing, that is poissible but they have to prove you are blatantly diluting and copying their TM for malicous purpose, i.e namepros.net that is the same exact service, site, everything except where the cash goes.
     
  22. CryptoCannabis

    CryptoCannabis Upgraded Member Gold Account

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    I'd recommend also getting a CC because your dealing with art, it is easy actually and goes a long way, sometimes its even more important than the TM
     
  23. anantj

    anantj Active Member VIP

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    Um, no. The classes are same (or extremely similar and related):

    Both are related to art!
     
  24. CryptoCannabis

    CryptoCannabis Upgraded Member Gold Account

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    related to art but doesnt mean same class, i'm pretty sure there's a difference in class of serviice
     
  25. Galaxy Traveller

    Galaxy Traveller Established Member

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    You are safe.
    If they want to force you, of course they can try.
    But rest assured, they will not win even if they engage best lawyer in the world.
     

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