Need Advice on Potential Trademark Issue

[binaryman]

Just a few days after the landrush I registered amongst others the name HotelSite,mobi
I noticed that quite a number of sites including the .com and .eu and .de and quite a number more are held by a German company E-Site,com Still some others are held by another company altogether.
On their Hotelsite sites (the German company) there is an announcement that the sites will become live sometime in spring 2007. As that date has passed and nothing is live on the sites yet I sent them an e-mail asking when the sites would become live as it is now already 2008. I never mentioned that I have the .mobi domain but they obviously went and checked the whois as that is the only hotelsite domain listed for sale and parked with Sedo. So they added 1 plus 1 and as I used my real name in my inquiry they replied saying the following:

Dear Mr. NAME
" reg. your inquiry and your domain registration I would like to let you know that HotelSite is a registered trademark.

Best regards
MR. NAME

So I went and checked again the trademark bases as I did also before regging the domain.
I checked the United
States Patent and Trademark Office "USPTO" and found nothing. I also
checked the Madrid Protocol Trademark database and found nothing and
also I checked the The Community Trade Mark "OAMI" and again I found no
trademark for HOTELSITE.

So my question now is..is he bluffing or is it possible he has a TM with another office or agency?
I replied to him saying that I dont want to break any laws and if he can furnish me proof of a TM held by him for that name then I would be happy to transfer him the domain and that it would be nice if he could refund me my original registration fee in that case. On the other hand I said to him that if he cannot show any TM then I would still be prepared to give him the name for Euro 350 if he wanted it.
PS. I did not even think that a name such as hotelsite could be trademarked. Are those not 2 generic words?
Any help or some insight would be appreciated.
Thanx and regards
Fred

 

[ajkula]

Hello binary,

try this link Germany's Trade Mark Database

 

[binaryman]

Hi akjula..yes I already did and he has a National Trademark for Germany only. That means it is only for Germany not International and not even for Benelux countries as a whole.
Regards
Fred

 

[Ronald Regging]

I don't know German, but I think I was able to navigate my way to the proper search. It seems there is a TM for HotelSite, but it wasn't registered until either April 5th 2007 or May 4th 2007 (i dont know which date format they use).

Your domain appears to have been register in 2006, so it should predate their TM. Obviously, they could have been using the TM prior to actually registering it, I'm not sure. But from what you've described, it doesn't look like they are even really using it yet at this point...

The term does seem rather generic to me as well. It's a hotel website... Hotelsite....

 

[binaryman]

Thnx Ron