Dominion.Domains

TradeMark app on domain I owned for 14 years.

Discussion in 'Legal Discussion' started by JeffreyL, May 20, 2018.

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  1. JeffreyL

    JeffreyL Established Member

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    Hi,

    I have owned a Domain Name for the past 14 years. Now a Canadian company operating with shame name has lodged a Trade Mark on the name. What are my legal ramifications regarding them wanting me to surrender name to them once the Trade Mark is approved? Can they do that?

    Any help would be most appreciated.

    R:
    Jeff
     
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  2. alcy

    alcy Active Member VIP

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    did they contact u yet?
    what did say exactly?
     
    Last edited: May 20, 2018
  3. JeffreyL

    JeffreyL Established Member

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    Alcy,

    No, they haven't contacted. It was just by chance that I did a Candain Trade Mark search and noticed they had a Trade Mark application in on the name. So just being pro-active and wanting to know how things stand legal wise.
     
  4. alcy

    alcy Active Member VIP

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    ah ok thats what I thought

    as far as I know if you regged domain prior to their tm application/approval, then the only thing you should be getting proactive about at this stage is figuring out the amount of money you will be asking them for for your domain when they do contact you.

    as I said I am no tm lawyer, but others should be confirming this shortly for you

    gl
     
  5. urlurl

    urlurl Active Member VIP

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    i would suggest taking it off a parking site if it is.
     
  6. JeffreyL

    JeffreyL Established Member

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    Thanks for feedback Alcy, appreciated. And yes, would be good to get feedback from group members who are in the legal arena.

    urlurl... yes, I am going to create an Amazon bookstore in a "not related to them" field.
     
  7. Michael Ehrhardt

    Michael Ehrhardt Active Member VIP

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    No they can’t
    Fight for your right
     
  8. JeffreyL

    JeffreyL Established Member

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    Thanks Michael, was hoping I was OK.

    I mean, it's hoped companies can't just go around trade marking names and thinking they have a right to own it's domain name... name sake... going back in time. Would be good to know the legal stance on this... and if there are any cases in poinit.
     
  9. wwwulff

    wwwulff Active Member VIP

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    I'm not an expert but as far as I know, they must prove that you have registered the name in bad faith and it is difficult/impossible because you have owned it 14 years before their trademark - I would do as urlurl says if you have it parked
     
    Last edited: May 20, 2018
  10. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    No, they can't but depends how your domain will be used from now on.
    Be careful, preferably don't park it in case it might show sponsored links for competitors. Classic mistake, great names like LLL.com were lost this way.
     
  11. mr-x

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

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    1 ) In the U.S.A. public has an period of time before a trademark is issued to oppose the mark. If you're really worried, educate yourself and write a letter opposing the mark.

    2) A trademark in one category doesn't preclude the use of the mark in other categories.

    3) Or other countries.
     
  12. JeffreyL

    JeffreyL Established Member

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    BIG thanks, everyone. Sure getting a better idea of the options. Re parking... just removed it from My own & AfterNic auction sites. And yes Mr-x... will look into opposing the trademark.
     
  13. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    If you are going to oppose the TM, you need a valid reason. Like they are encroaching on your rights.
    If you've been sitting on a domain without developing it you don't accrue any TM rights.
     
  14. bulkdomainz

    bulkdomainz Established Member

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    If your end goal is to sell the name, I don't think there is any need to oppose the trademark. As you have owned it years before they file their trademark, I don't think you need to take it off the market as long as the lander page shows no advertising.

    All the best with the name.
     
  15. JeffreyL

    JeffreyL Established Member

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    Thanks bulkdomainz, I have removed from landing page as it could contain advertising, better to be safe... And yes, probably don't have a very good reason (Kate) to oppose trademark as I'm in operating in a different category.
     
  16. BaileyUK

    BaileyUK Established Member

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    I have a couple of domains .coms that have been in that situation for years. You tend to get the "light weight request (testing the water) then hear nothing for sometimes years, usually a reasonable counter offer follows. - It is just likely to drag-on. most new companies tend to start of with a company name but it could be years before it goes into development.

    I'd be influenced by the size of the TM registration/ Classes/ geographical positioning/ Business history an size.. Then make a judgment call on how much later, they'll probably ask about the domain
     
    Last edited: May 21, 2018
  17. JeffreyL

    JeffreyL Established Member

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    Thanks for feedback BailyUK... all make sense. I'm pretty sure they made an inquiry a year back via AfterNic but think I scared them off with $$ :).

    But they are a big company... so sure there cashed up. I can either wait for them to contact me or message them... but if I do latter, I'll let them know I'm also reaching out to other potential buyers.
     
  18. BaileyUK

    BaileyUK Established Member

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    I'd be careful about approaching a TM holder direct, even if that TM was registered much later than your original domain registration. (the only exception i'd make, is if I was offering it at a very appealing price)

    i'm sorry to say but, my past experience tells me that a Company that goes for a TM prior to securing the appropriate domain, is unlikely to value the domain as a high priority (more of a nice to have)
    Virtually every large Company has many trademarks for subdivisions/products etc, They never expect or really intend taking ownership of every relevant domain.

    Depending on the Wider appeal of the domain, you may wish to reevaluate if you see this particular Company as your best sales opportunity. The additional downside is (depending on the TM classes registered). A subsequent TM, particularly by a large well-known company can sometimes limit the appeal to other potential buyers of your domain .
     
    Last edited: May 21, 2018
  19. JeffreyL

    JeffreyL Established Member

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    Thanks, BailyUK,

    Get where you are coming from. The company in question is actually using a hyphenated version of the 2-word domain, so sure they would find the non-hyphen version an appealing asset. Plus there are about 6 companies that I feel would be ideal prospects. Though, the company in question would have deeper pockets. I'm in no rush so don't mind sitting on it and seeing if they contact me.

    Also, I have taken it off of Parking/auction sites so now they have to come to me directly... via contact on web site I have set up.

    Once again, big thanks for all the feedback, most appreciated.
     
  20. BaileyUK

    BaileyUK Established Member

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    Cheers, that mention of them using the 'hyphenated' Puts everything into a different perspective. You appear to have your bases covered. No harm in putting your Price on the holding page, You retain the right to name your price anytime, it might just prompt them to re-enter negotiations
     
    Last edited: May 21, 2018
  21. BrandVenue

    BrandVenue BrandVenue.com Gold Account

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    I'm not a lawyer but from my experience it seems you are ok. A trademark holder need to prove all 3 elements if they want to win UDRP dispute. Those elements are:

    1. domain name is identical or confusingly similar to a trademark
    2. registrant does not have any rights or legitimate interests in the domain name
    3. domain name has been registered and the domain name is being used in "bad faith"

    even if element 1 and 2 can be proved, element 3 cannot be proved because domain in question has been registered and owned by you since last 14 years.

    And unless they file a UDRP dispute you have nothing to worry.
     
  22. MetBob

    MetBob Established Member

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    I found this thread informative, and really hope it works out for you. It certainly seems from my understanding that they have no argument at all for element 3 (bad faith) of UDRP in this case.

    I was wondering what others think whether it would, just to be super sure, wise to put up something on the site with the name that clearly has nothing to do with the company? That way you would also win on point (2), you have legitimate interests in name. Just a thought.

    Do you know if the company have the .ca version of your name already, or just the hyphenated com?

    Best of luck with it!
     
  23. JeffreyL

    JeffreyL Established Member

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    Hi,

    BrandVenue, Thanks for the checklist, very helpful... looking like I'm OK on a couple of points.

    MetBob, Yes, I'm finding the thread very helpful... hopefully others do also. Regards the .ca version of the domain. For some reason, they have not registered the .ca version. Obviously, that doesn't look good on there part.

    Thanks again.
     
  24. frank-germany

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

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    why don't you get a US trademark?

    and please ask a lawyer
     
  25. JeffreyL

    JeffreyL Established Member

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    Hi Frank, Yes, I could, Emmm... would need to think on that. Re layer... yes, would definaterly involve layer if and when needed. Thanks for feedback.
     

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