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trademark TradeMark app on domain I owned for 14 years.

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JeffreyL

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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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The views expressed on this page by users and staff are their own, not those of NamePros.
i would suggest taking it off a parking site if it is.
 
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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


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.
 
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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.
 
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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
 
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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.
 
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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.

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 .
 
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I had the same thing happen to one of my favorite domains that I had always thought I would develop (but when you own many "favorite" domains I'm sure some of you know how that goes). The big problem in my instance was they registered the mark in the same category I was going to use it in. So the domain became basically worthless to me. That company ended up contacting me to buy it. It was a nice sale, but I still felt really burned about not developing it sooner.

Domains are not virtual real-estate. They are an extension of the brand. Unfortunately, if you have no website/app/service/whatever you have no brand. You have no business. Therefore, you have no rights. It would be like an old man pulling a "WALMART" sign out of his shed and saying that because he made it in 1950 he can use it for his store today.
 
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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
 
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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.
 
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Thanks... Yes, I'm creating a Amazon store around the domain. Hopefully that should be enough to prove good intent. Plus, subject matter very much aligned with core products I have created.
Nice. You don't need to get a trademark to prove good intent with this domain. As mentioned in many other UDRP cases, buying domains to sell them isn't in itself bad faith. Bad faith is intending to extract money out of an existing brand, or stopping an existing brand from using a domain cause you registered it... that kinda thing. But to be provable they generally need to have proof of a trademark that was registered prior to your registration as has been previously mentioned.

I highly recommend checking out the decisions for some UDRP cases on the ICANN site, they're quite interesting and you'll get to know and understand the kinds of things they can steal the domain from you for.
 
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Put up a website, use the domain in commerce, sell anything, heck even domain names.

Now you have used it in commerce and that gives you a degree of protection.
 
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Yes, necassery at times though... hoping this is not the case.

you miss the point

don't ask non-lawyers legal questions
get advice where it's good
not where it's free
 
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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.
 
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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
No they can’t
Fight for your right
 
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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.

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.
 
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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.
 
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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
 
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why don't you get a US trademark?

and please ask a lawyer

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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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.

guess it's now
 
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Yes, they have a .com website, but the domain name is hyphenated. Re the tm route... not keen to be going down that route, all seems a bit too hard. Big, thanks for the feedback.

Hi,

have you checked the TM applicant's current website/domain? Just wondering if they have a website alive with the same name .net/.info/.whatever. To create a TM is about $400 and 12 months to many years, so unless you build your brand on that domain, i would't bother to go thru the TM process, just be careful as stated above, but you never know look at france.com.... if your domain is super premium and the TM applicant hire good lawyers, they can try to get your name.

Good luck,
Tomas
 
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A trademark violation only is the case if the content of your website is about the same products or the same thing they do as you do. (look at trademark247.com).
If they begin a UDRP they have to pay 1.500 Euros to start a UDRP.
It's possible they do that, but usually they would send an email and if they ask if you want to sell them the domain, then only call first and ask less then 1.500 Euros and say you do that "to spare them the cost of having to begin a UDRP.", and you really did eveything in good faith.
But it has to be told : part 3 of a UDRP is for them hard to proof. They could say you knew them already and on parked pages advertisements automatic are shown about similar products they sell. They can also say that you registerred this in bad faith because they are very well known and you want to get attrackt more customers to your website, because you use their name. But the whole thing is that you can say you never heard of them before, when you registerred the domainname back 14 years ago.
So either forward to blanc page ("under construction"), either put your website. In any case you are safe if the content of their trademark (they have to describe in the Trademark what the word is meant for, what kind of business. If that is something else then your content, I should think, you're not infringing their trademark).

The hyphen is something you could use in case of a UDRP attacking them on argument 1/ first thing they have to proof : Their name has to be similar to yours. You could say that they use or Trademarked the word with a hyphen (I don't know if that is the case, because you didn't elaborate on that).
In any case lookup if their application is only with a hyphen.
I'm not sure you will win this 1st argument...but I had a UDRP once, and it's already a kinda argument in your favour even if you loose this first argument.
If their Trademark is not the hyphenated word, but the whole word, you could argue in your UDRP-reaction that you remarked that they didn't register for instance their full name in the the dotnet-extention, but the hyphenated dotcomname.

What's also important if you really have content and a company that's named the same way as theirs, but in another country, and that you can say you didn't know of their existence. (you talk about canada).

Of course you can start a very quick Trademarkregistration also...

Also check if there are other persons or organisations that have a Trademark on the name. (f.i. Trademark247.com)
You could ask -if there is such a company- to that company first by phone if they would bother about their Trademark and you owning the dotcom-name. If not, ask them to send a letter or email to you, where that company stresses that you have asked to them (once) for approval to use their trademarked name for dotcomregistration and they have approved of that.

IMHO I find Trademarks strange things. Certainly if it concerns for instance 3 letters or 4 letters or so. There will always be tenes or hundreds of organisations that use a specific LLL as their abbreviation in several countries in their language.
That's why I find first come first served, for domainnames the fairest. Not Trademarks.

Anyhow : everything depends on how important this domainname is for you.

In any case lookup UDRP's => These are published online and investigate yourself some UDRP's and what the judges or judges in Switzerland have decided, and what is their usual way of accepting arguments or not.

Something that's important in case of "parked domains". If your domain is registerred and parked for instance
at Dynadot, you can argue that Dynadot already for many years doesn't payout any profit of the ads to YOU. This is important for argument 3 in the UDRP. (Of course in that case you send an email to dynadot and ask if they reply to you to the following question : Approximately how many years, you're not paying out any parkingad-commission to your registrants with DDot-parked pages).
 
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Hi DomainStore,

First off… very big thanks for your in-depth reply.

Firstly, my site could not be more different, it's in a totally different industry.

Also, when I purchased it I had never heard of them. It was only after getting an offer from (AfterNic, several years ago) that I did a Google search and found their domain with a hyphen and thought it may be them.

Also, they are not TradeMarking the hyphen… just the two words. And yes, I could say they already had the option to reg un hyphen version, but choose to not do so.

And thanks, something you said that triggered me to apply to have data removed from Wayback machine. Just that something from way back when would not look good.

Also, never received any parking revenue of the domain.

I'll continue to reread your reply and see if I get any more value insights/ideas.

Thanks again, most appreciated.
 
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did they contact u yet?
what did say exactly?
 
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