Possible present but no past Trademark/Common Law

[wisconsin]

My situation is similar to:

I registered a domain in March 2004. It is a generic 2 word domain with no previous trademark or common.

A company or a corporation forms a business –for the first time- under the same 2 names in this coming July 2005 and start using it in commerce.

Again, there is no trademark or common laws because the company or the corporation never existed before.

I do have an “LLC” associated with the name

The domain is similar to:


**City**Realty.com (This is only an example!)

The company that just got formed is indeed a “realty company”, so it may make sense.

However, my business is not a “realty** even though it has the word “realty” in it but instead is a charity and has nothing and never had anything to do with commercial business.

I have the .com .net & .org

They offered to buy the dot com but I said “no”

I know I can sell the dotCom and keep the .Org but I still said no, anyway!

Is there any problems you think I can run into?

Also can a trademark or a common law be used against you based on the present not the past? In another word, in my situation, they can not claim trademark rights or common law based on the past because they didn’t exist but can they claim these rights based on the present time? Event hough , I registered the domain a year before.

Appreciated!

 

[jstep]

How much have they offereD?
why not take the money and run (put it into the charity)

I can see why you need all 3, or even jst sell them the .net

 

[wisconsin]

How much have they offereD?
why not take the money and run (put it into the charity)

I can see why you need all 3, or even jst sell them the .net

They have not offered a $ amount! They just said the company wants to buy it. They contacted me 5 times, including thru a third party.

It looks like the company is doing business overseas as well and currently using a different extention with the same domain.

Yes, I could sell the dot com and keep the .Org (that's what they want!)

But can they claim "bad faith" if I agree to sell them the domain and they think the price is high? Do I have any restrictions in-terms of the selling price?

Thanks

 

[Peter]

if you registered the domain name before the company existed they would not have a case, they cant claim copyright on something that already existed.

 

[wisconsin]

Thanks, filth!

-They have not claimed anything with regards to trademark rights or common law.
-They also acknowleged recently forming the company with no prior commercial use.
-They recently sent more emails, saying they want to buy all the extensions, including .com .net & .org

-They asked for the price!

has anyone used effective wordings in telling a buyer, inderectly, for a price for your domain without saying "it is for sale!"

Thanks, Guys!

 

[andriegel]

if you registered the domain name before the company existed they would not have a case, they cant claim copyright on something that already existed.

I have some elementary experience regarding this issue, and the timeline/existence test does not apply UNLESS you demonstrated active commercial use, and the submission for a TM. This is quite clear in TM law.

I would try to make the deal happen with them.

Good Luck!

-Andrew

PS : here is the TM searchthingy
http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=bcjgo2.1.1

 

[wisconsin]

if you registered the domain name before the company existed they would not have a case, they cant claim copyright on something that already existed.

I have some elementary experience regarding this issue, and the timeline/existence test does not apply UNLESS you demonstrated active commercial use, and the submission for a TM. This is quite clear in TM law.

I would try to make the deal happen with them.

Good Luck!

-Andrew

PS : here is the TM searchthingy
http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=bcjgo2.1.1

Thanks!
Are you saying that even though you may have registered a domain 3 years ago and someone else comes in 2005 and starts a business under the same domain name, can claim rigths to the domain.

just an example:

You registered the name "BarcelonaRealty.com" in 2002
A business just started this years as "Barcelona Realty, INC" (they never existed prior to this date *2005*)

Do you think they can claim rights to the domain above.

I do not own above domain! It is only a similar example to my situation.

Appreciated!

 

[andriegel]

yes, this is true.

Another example:
If you registered HydroCar.com five years ago but never registered or applied for a TM demonstrating commercial use, and GM comes along and develops a Hydrogen powered car called HydroCar, and they register the name with the TM office, you could be in a compromised position.
You must show comercial use/intent to claim the mark.

Thanks!
Are you saying that even though you may have registered a domain 3 years ago and someone else comes in 2005 and starts a business under the same domain name, can claim rigths to the domain.

just an example:

You registered the name "BarcelonaRealty.com" in 2002
A business just started this years as "Barcelona Realty, INC" (they never existed prior to this date *2005*)

Do you think they can claim rights to the domain above.

I do not own above domain! It is only a similar example to my situation.

Appreciated!

 

[jroy]

ask for a crazy amount of money like $x,xxx,xxx

 

[nRnF]

ask for a crazy amount of money like $x,xxx,xxx

YES - do this for the com/net/org combo and when you are in need for a new domain I will help you

 

[wisconsin]

yes, this is true.

Another example:
If you registered HydroCar.com five years ago but never registered or applied for a TM demonstrating commercial use, and GM comes along and develops a Hydrogen powered car called HydroCar, and they register the name with the TM office, you could be in a compromised position.
You must show comercial use/intent to claim the mark.





I see your point!

While this maybe true when it comes to who first used the name in "commercial" use if it ends up in a legal proceeding, I think this may differ under ICANN, WIPO, & UDRP rules. as to whether there was "bad faith" in registering the name, in the first place, to disrupt someone else's business, and/or considered "unfair trade"

This is only my understanding! There is always a "twist" to everything!

I am wondering if any of the members was involved in a similar situation or if you know of any similar WIPO case.

Thanks everyone!

 

[jberryhill]

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0798.html
The Panel finds that it would have been impossible for the Respondent to have been in bad faith vis-à-vis the Complainant when the Respondent registered the disputed domain name since the Complainant did not exist at the time the Respondent registered the disputed domain name.


http://www.arb-forum.com/domains/decisions/297926.htm
While the Panel need not examine this element, it would be impossible for Complainant to prove Respondent registered and used the <scooterplanet> domain name in bad faith pursuant to Policy ¶ 4(a)(iii), since by Complainant’s own admission, Complainant did not even exist, much less market its products and use them in commerce until four years after Respondent registered the disputed domain name. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent to register disputed domain name in bad faith if Complainant's company did not exist at the time of registration).

 

[andriegel]

Well There you have it!
Thanks, jberryhill!

-Andrew

 

[wisconsin]

Thank you, jberryhill!

 

[jopros]

Yes, you have it now!

 

[wisconsin]

Received a $20k offer for all .com, .net, & org but haven't sold, yet! I am assuming if they really had a case and a chance to take these domains thru WIPO road, they would have done it a long time ago and not make me this offer?

Thanks,

 

[Acroplex]

It seems you are really pushing your luck - get an offer in writing and sell it already! :D

 

[wisconsin]

It seems you are really pushing your luck - get an offer in writing and sell it already! :D

I got the offer in writing twice! I just think ( and they know it as well) that the value will significantly increase as years pass due to this company's position.

 

[Acroplex]

A corporation can easily adapt its focus, even business name, to something alternative. Frankly, I think that you're being foolish hoping that you'd get more if you declined their offer now, simply because in the future they will most likely refuse to negotiate. When it comes down to domains, one can simply add an "LLC" or "CORP" or "INC" etc to the domain and it becomes a seven dollar cost.

 

[wisconsin]

A corporation can easily adapt its focus, even business name, to something alternative. Frankly, I think that you're being foolish hoping that you'd get more if you declined their offer now, simply because in the future they will most likely refuse to negotiate. When it comes down to domains, one can simply add an "LLC" or "CORP" or "INC" etc to the domain and it becomes a seven dollar cost.

RADiSTAR, I think you're right!

Also these domains are associated with my company registered in my state as an "entity", so the question for me is: Is it worth while selling them for $20k or not?

Thanks,

 

[Acroplex]

What would be the cost for you to change the name of your entity? Not that you have to - other than the website itself. Also, since they offer you to keep the .ORG, that's a non-brainer. GRAB THE MONEY WHILE THE OFFER IS HOT! :D

 

[wisconsin]

What would be the cost for you to change the name of your entity? Not that you have to - other than the website itself. Also, since they offer you to keep the .ORG, that's a non-brainer. GRAB THE MONEY WHILE THE OFFER IS HOT! :D

I think I can change the name...But they also insisted on having the .ORG as well!

 

[dgridley]

As far as I know the words "realty" and "realtor" may only be used by actual realtors.. I don't know if this is a TM issue, but I suspect it is.

 

[wisconsin]

As far as I know the words "realty" and "realtor" may only be used by actual realtors.. I don't know if this is a TM issue, but I suspect it is.

Hi dgridley,
It's nothing to do with "realty" , "realtor" or "real estate" I was just giving an example above! It's completely a different field!

Thanks

 

[andriegel]

Realtor is Tm'd- (frequently pronounced Rea-la-tor, but it's: Real-tor)
The others are generic

-Andrew