"New Application"... is that classed as a regd. TM?

[MadAboutDomains]

Hello,

I offered a domain to a company and now they say that they want the domain else they'll go to UDRP or Lanham Act for remedies.

I have checked the UK Patent Office and it says on their website that their mark is a New Application.

They own a mark in the USA which predated the registration date of my domain, but the my domain predates application date of their TM in the UK (where I live).

Does this mean that they own the trademark? Do they have a right to the domain under application status?

Thanks

- Luke

 

[Ronald Regging]

UDRP has an international reach from what I've seen, so it doesn't matter if you are in the UK and the company has a TM in the US. Either way, both countries are part of the Madrid Protocal, so yes, their original US TM is valid. Depending on the name, you might have been able to keep it, if using it for something completely unrelated to their TM, but the fact that you approached them to buy it cant help. Basically it comes down to either transfering it to them or hiring a lawyer to defend it if it goes to UDRP. Don't reply to them though unless you're going to transfer, because you may say something that hurts your case even more.

 

[viciouscircle]

This is a situational thing. Have you marketed the domain in commerce/tried to make it a brand, outside a U.K. audience? Have you used the domain in a way that infringes upon any of the industries they have a trademark for? If the domain has been exclusively marketed towards the U.K. and/or used for another industry than the one(s) the company has a TM for, you have a decent chance at arguing. If anything you have done has made any capitalization off of the company's TM, you probably don't have that good of a chance.

I think the IMPORTANT question you need to answer first, is how important this specific domain is to you. Do you wish to fight for it, or would you rather just wash your hands of the situation.

 

[DNQuest.com]

This is a situational thing. Have you marketed the domain in commerce/tried to make it a brand, outside a U.K. audience? Have you used the domain in a way that infringes upon any of the industries they have a trademark for? If the domain has been exclusively marketed towards the U.K. and/or used for another industry than the one(s) the company has a TM for, you have a decent chance at arguing. If anything you have done has made any capitalization off of the company's TM, you probably don't have that good of a chance.

I think the IMPORTANT question you need to answer first, is how important this specific domain is to you. Do you wish to fight for it, or would you rather just wash your hands of the situation.

The OP already said he approached them about selling the domain, that basically makes null and void the above statement. If any actions of the domain holder can be shown as bad faith, it almost (and I said almost) doesn't matter what else you have done. The OP admits to a predated TM and admits to approaching them to sell the domain.

 

[viciouscircle]

This is a situational thing. Have you marketed the domain in commerce/tried to make it a brand, outside a U.K. audience? Have you used the domain in a way that infringes upon any of the industries they have a trademark for? If the domain has been exclusively marketed towards the U.K. and/or used for another industry than the one(s) the company has a TM for, you have a decent chance at arguing. If anything you have done has made any capitalization off of the company's TM, you probably don't have that good of a chance.

I think the IMPORTANT question you need to answer first, is how important this specific domain is to you. Do you wish to fight for it, or would you rather just wash your hands of the situation.

The OP already said he approached them about selling the domain, that basically makes null and void the above statement. If any actions of the domain holder can be shown as bad faith, it almost (and I said almost) doesn't matter what else you have done. The OP admits to a predated TM and admits to approaching them to sell the domain.

My question implies how specific the domain is to the company. Just offering a domain to the company doesn't make anything null and void on its own. The surrounding factors are what determines that. It can be successfully argued, especially if there are other companies who might have interest in that domain. Ex: If I owned apple.com, and was using the name for something unrelated to computers, offering to sell it to Apple Computers doesn't demonstrate bad faith. A name can be specific within an industry, but generic outside of the industry. Hence my questions.

 

[DNQuest.com]

If, ands or buts are all well and good, but I bet 95% (and maybe higher) of all questions in legals are about passively held domains by domain speculators looking to make a buck. This means the domain is parked or it's a portal page and not developed and it's own unique site. It is nice to paint a picture of optimism, but we need to be real about these things.

Yes, if the domain holder developed a site in a different catagory that the TM and decided to shut the site ddown and offered the domain to the TM holder, he might be able to argue his position. Or if the term is generic and is a descriptive meaning, he might be able to argue his point. Or if....

But my guess is this doesn't apply....

 

[Spade]

Jiblob -

I think your going to have to cough this domain name up - Im not sure the best way to go about it to try and get atleast a few dollars out of them, but the truth is, its cheaper for them to cut you a check for a few hundred, then to have a laywer begin working on it. But to be honest, the whole thing sounds like a bust. Best of luck.