Someone trademarked my domain

[patches]

Has anyone had someone register a trademark for one of their domains? The trademark was filed by a large company, two months after I registered the domain. It states, on the trademark, that the name was first used in commerce two months after I registered the domain. Will this cause any problems down the road?

 

[brindle123]

parked?

i'm not sure. if you had it parked or if you were making money somehow from it at the time i think you might get by. you were using it in commerce before them. this is just my thoughts.

 

[patches]

I had it parked and my key words for my parked page is what he has in his trademark. (except he used more technical language).

Correction:After calming down and re-reading the language used to describe the trademark and checking my parked page ads, I don't think the technical description on the trademark would apply to my domain.

 

[cache]

it may not matter when they filed it, if they used it earlier, you still would have trouble.

Has anyone had someone register a trademark for one of their domains? The trademark was filed by a large company, two months after I registered the domain. It states, on the trademark, that the name was first used in commerce two months after I registered the domain. Will this cause any problems down the road?

 

[verbster]

Once a trademark is successfully registered with the USPTO, certain statutory rights are created protecting the trademark owner. However, the general rule often referred to as "first-in-time"--The first person or entity to use a trademark in commerce receives common law protection for the use of that trademark. Thus, this "first person" can prevent others from using that same trademark...even if this "first person" never registered the mark. Therefore, conducting a Comprehensive Trademark Search is vital in helping you make the determination of whether to proceed forward with your trademark registration...even if the mark is NOT registered with the USPTO by another person or company.

Although the majority of trademarks in existence are not registered, owners of un-registered trademarks still have legal rights to the exclusive use of their trademarks.

Trademark rights exist on three levels: at common law, by state registration, and by federal registration.

Common law marks are marks protected because they have been adopted and used, and the public recognizes the products or services identified by the mark as coming from a particular source.

State registration systems exist throughout the country to allow the owners of common law marks to register them if they are used within a particular state.
As commerce between the various states evolved, the federal system of registration emerged to provide protection for marks in interstate commerce. Federal protection may be available for the name of your product and/or service, a logo or any other mark that identifies you as the source of a product or service. Common law and state registration rights will be enhanced by the benefits associated with federal registration.

Federal registration rights can be renewed and can last forever.

 

[greggish]

If the mark had not been granted yet, but just filed, you can oppose the trademark.

 

[patches]

Since I was using the domain before the name was trademarked and before the name was used in commerce, I presume the company has no legal claim on my domain. However when I check the way back machine to verify my use of the domain, it is not listed. It has been parked with Sedo since the first part of Jan. Does anyone know if this is because the way back machine is not updated or does the fact that it is a parked page have something to do with no listing?

 

[End User King]

I just want to know if they can take your name.
A definative answer will do.

 

[lasvegas]

No company can take your name if you reg'd it before they trademarked the name.

Otherwise people would be tradmarking domains names left and right just to steal domain names.

 

[End User King]

Thanks lasvegas for the quick sumup.

 

[Mark]

Moved to the Legal Section - I believe you'll get a better response in here.

No company can take your name if you reg'd it before they trademarked the name.

Thats not necessarily true - In this case they are saying the "Word / Term" was not used in commerce before he registered the domain name - Which would have to be verified of course , But - If this company was using this "Word / Term" before he registered the domain - There would be a very good chance they could acquire the domain. There is a assumed protection most times with existing Companies / Organizations .... They don't neccessarily have to file or apply for anything to be protected under ™

Even in this particular case and assuming we have all the information we need to work with - I'd make sure no ads were running on the parking page that is closely in competition with this company. Is it a Generic Industry term ? Or a made up type name ? (It's Kind of hard to judge with no more info than we have)



Good Luck

 

[patches]

Mark

I will pm you the domain.

 

[RS]

Wow, i find that odd, im sure theres some legal issues running down the line being that you had the domain first.

 

[DNQuest.com]

There seems to be 2 issues being discussed.

1- if you had the domain before first usage by the company, they cannot prove bad faith registration.

2 - If you start using the name in bad faith (IE- copy thier site and using thier name to sell products like thiers AFTER you find out abuot them), then you can lose the domain in that respect.


If you did register the domain before "first usage", you are mostly in the clear, you just have to be careful how you use the domain, though you do have broader areas you can use it for since your intentions were never bad faith to begin with.

Also, if you had the domain befoer first usage and they come after you, they could be subject to "reverse hijacking"

 

[patches]

This is the only domain I have checked for a new trademark filed. I guess all domains should be checked for new trademarks every so often. You would never know if your parked page ads could get you into trouble. I never gave it a second thought about a new trademark popping up after my domain was registered.

 

[Robert Allen]

Not exactly.

Around 5 years ago, my brother, jules, went to court with a company in france, with the name 'jules'. His domain is jules.com (he actually still has it). He won, but he was really annoyed at the legal costs.

JA has owned jules.com since 1994, and the company was less than 2 years old when it tryed to sue my bro.

 

[patches]

Around 5 years ago, my brother, jules, went to court with a company in france, with the name 'jules'. His domain is jules.com (he actually still has it). He won, but he was really annoyed at the legal costs.

Did the company have to reimburse your brother for his legal costs?

 

[aLeeOnline]

No company can take your name if you reg'd it before they trademarked the name.

Otherwise people would be tradmarking domains names left and right just to steal domain names.

yeh right, this wud be so easy to get a domain from anyone by just registering the trade mark.

 

[Dave_Z]

Did the company have to reimburse your brother for his legal costs?

No.

 

[patches]

I checked the US trademark site and found this statement.

Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages.

When you purchase a domain and park it with ads pertaining to certain products, does your parked page constitute established rights in a mark?

It takes time to develope a site plan for selling products and if you don't park the domain, your registrar will put it on the internet with whatever ads they want. I think that if you want to protect your domain you should make sure you specify what products are advertised and you can only do this if you park it yourself.

Once someone has trademarked your domain, I guess your only option is to continue using the domain. What else could you do with it. If you sell it, I presume the new owner would not have any protection against the company that owns the trademark. Does anyone know if this is correct?

 

[Dave_Z]

Let's say I registered a h o l.com and park it. 2 months later, a company files
a trademark for the letters a h o l to sell widgets.

Ideally I'm fine since I got the domain first. We both go our merry ways.

But...

6 months later, my domain's PPC page shows widgets ads. Then I can get into
trouble because I might be seen getting a free ride from that company who
spent time and money investing and building their brand.

BTW, the mess.com UDRP can give you a few clues. :D

Note: the domain name above is "generic". Yours may or may not be.

 

[patches]

Dave Zan

I'm not positive my domain is generic, but I think so. I will pm you the domain for your thoughts.
Thanks for the mess link, very helpful.

 

[labrocca]

Nice thread.

Here is my opinion and how I would proceed.

Since I was aware of this new TM being registered I would contact the company. I would tell them I aware of their registration of the mark and I am considering my best course of action. I may choose to oppose the mark if I find their usage is infringing on mine (yes I am taking the high road). I would also ask if they were aware of my registration and use of the domain with respects to their TM. I would want to know what intentions or plans they had in mind considering that I already owned the domain.

Maybe I ain't wording all that very well but basically I would take the high road and feel out if they have a purchase of your 'rights' in mind. You could tell them that you would be willing to sell them any and all rights that you have in the mark to them.

Yeah I play it dangerous but imho what do you have to lose? Does the domain make that much? And as stated....you contacting them first shows you are on the ball with things.

 

[patches]

Thanks Lobrocca

I don't know if I could be as brave as you in this matter. All I can say is Heads up domainers. This could be a new form of domain hijacking. Make sure you know if and when a company registers a trademark for your domain and that you don't have similar ads on your parked page. Make sure you park your domain so you have control of the type of ads running. If you don't park your domain, your registrar will park it and you have no control over the ads.

 

[Robert Allen]

Around 5 years ago, my brother, jules, went to court with a company in france, with the name 'jules'. His domain is jules.com (he actually still has it). He won, but he was really annoyed at the legal costs.

Did the company have to reimburse your brother for his legal costs?

I don't know the exact details, since i only know a bit about it, but my brother was not happy one bit. I honestly feel sorry for him, he lost his first wife to cancer 2 years ago, and i lost my dad 6 months ago (it was his dad too). Cannot say anymore, but i really look upto my brother.

Robert.