trademark TradeMark app on domain I owned for 14 years.

[JeffreyL]

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

 

[JeffreyL]

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.

 

[JeffreyL]

No they can’t
Fight for your right

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.

 

[JeffreyL]

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.

 

[BaileyUK]

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

 

[JeffreyL]

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.

 

[JeffreyL]

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.

 

[Bob Hawkes]

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!

 

[JeffreyL]

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.

 

[frank-germany]

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

why don't you get a US trademark?

and please ask a lawyer

 

[MadAboutDomains]

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.

You'd need to use the name in trade though, you can't just register a trademark and not use it.

Owning a domain doesn't count either.

 

[JeffreyL]

You'd need to use the name in trade though, you can't just register a trademark and not use it.

Owning a domain doesn't count either.

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.

 

[lowcalls]

I think you don't need to worry because the TM suits are always based on 'bad faith' and violation intent on an already existing brand.Since you were the first to coin the name, you haven't infringed on anyone's TM.
You can even do similar business with the name and target customers in different locations. Apple,Facebook and even the mighty google at some had to buy names from those who had already registered them. There are lots info about TM just google them. I hope this piece can give you headway.

 

[MadAboutDomains]

guess it's now

Lawyers are bad news.

 

[JeffreyL]

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.

That's my thinking...
...Site, content, Amazon products, logo, 5/8 pages of content and have links going to my "already in the niche" sites/pages.

 

[eurorealtor]

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

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

 

[Isac]

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

At least make single page website as soon as possible. Then no one can touch it.

 

[JeffreyL]

At least make single page website as soon as possible. Then no one can touch it.

Yes, allready done that... thanks.