Trademark issue (domain registration date vs filling trademark date)

[bojan1]

Hello everybody,

One of .com domains that I own is listed for sale. Recently I noticed that .io version of my domain is registered few years later and developed into a company website. They showed as their email address [email protected] .... so they actually showed email address that doesn't exist until this day because I own .com domain. After checking trademark issue I noticed that they filled trademark for that name three years after I have registered .com version of that name. Until this day they didn't buy .com even though it is listed for sale and everyone can buy it. I wonder why since they showed as email address .com version (not .io). Maybe they did so by mistake, but maybe they think that since they filled trademark .com belongs to them?

Since I have registered .com three years before they filled trademark on that name they have no legal right for .com domain name. Am I right? I got recommendation for @jberryhill ... so thank you very much!

 

[BaileyUK]

I wouldn't worry about it. I agree strange that they should use your .com domain for a Support@ address but it sounds like web developer error. I doubt it would come from the .IO owner. (they obviously don't get many requests for support)

Bare in mind for many of us that have been in domains for Many, Many years. Our domain registrations often have, hopefully many later Trade-Mark registrations, It's what we expect to see. The more varied the better. It shows we've got our thinking Caps on straight and there is demand for our domains.

Your safe just using a straight sales-page but do be more cautious if your using page/s with Ads. Ie, stay clear of any of the TM Companies protected classes.

Lastly don't contact them directly. Keep an eye on their website and who knows you may well get an offer, if they are successful in their business project. Of course I don't think it's intention but just be careful they may be scheming. ME, I would list this domain with a clear Price. Do come back to me If you need any further guidance

PS. I love to have around 20+ of my domains in your position. So long as I predated each TM as long as you have.

 

[bojan1]

Thanks @BaileyUK .... unfortunately I sent them email already (on .io version of their email, which they may not use at all hehe) just letting them know that .com is for sale... Do you think that that could be a mistake that would ruin sale opportunity? However, I like this name since I registered it and planing to keep it in future

 

[BaileyUK]

That was not a good move under the circumstances. I hope you weren't daft enough to mention their TradeMark applications in any way. - And further more Don't mention them in any future communications either.

You should have stuck to something that just mentioned their misdirected support page and left it at that. (Good citizen and I've got the .com) It's never clever to reach out to Companies using the same term/domain without covering all your bases.

This Company is probably just waiting to see how the TM applications go before finalising domain extensions etc. OF course they want your .com. Don't give them any reason to file a complaint. The best thing you can do right now is 'Just Wait' keep an eye on the TradeMark filing. It may all come to nothing.

Don't contact them again, the balls in their Court. Hopefully you've kept your Pricing reasonable and based on all the criteria a savvy domainer would normally apply. Without knowing the Business the domain, the terms general usage and uniqueness I can't advise you further. They've always known where to find you So don't start giving them Ammo under the UDRP

 

[bojan1]

No, I just sent them email letting them know that .com is for sale and mentioning to them that it would be their logic next step to upgrade their .io extension to .com since they mentioned that their email address is .com. Just pointing that. No TM mentioned, nothing else. I am even not sure if they received that email at all, since I just assumed that they use same email address they mentioned, only .io instead .com.

I will send you now DM mentioning which domain name exactly. Thanks.

 

[BaileyUK]

Yep Got it. And OK your communication reads good, you had me worried. I like the advisory tone. I'm quite busy today but give me until tomorrow to dig down a bit and I'll add my pennies worth to your thoughts. It's certainly a decent domain.

 

[jberryhill]

I can only answer the same question over and over again so many times.

The filing date of an application to register a mark DOES NOT MATTER.

What matters a whole lot more than that are:

(a) the degree of distinctiveness of the mark, and

(b) when they began USING the mark, and the relative degree of consumer recognition they obtained if that use was prior to your registration of the domain name.

I don't know how many times this really needs to be explained, but it would be great if domain investors would focus more on when the potential claimant began accruing trademark rights, if any, and not when they filed some paperwork with a government office.

In the US and many other countries, one does not 'get' a trademark by filing an application with a government office. The way you get a trademark in the United States is by using a mark for goods or services such that the mark is capable of distinguishing your goods and services from others in the relevant market.

In order to find out if someone is doing that, your best search is conducted on GOOGLE and not the USPTO trademark database.

 

[BaileyUK]

Sorry but the above discussion was way less than half of that made between me and the OP by direct messaging. It has been established that there is No real user of the domain or name for a business at the present time. There is little more than just a test site running and even that is with an incorrect email address.

However there is a trademark application still pending. The advice given is also based on other observations all negative I'm sorry to say. The emphasis on the trade mark application is purely because that is all that is remaining to indicate there is possibly some potential buyer.

Anyway I just didn't want anyone thinking that we were somehow putting the cart before the horse. I can assure you every bit of research was done by Google, including established use. but when everything leads to a dead end. your only left with the outstanding TM application and there is nothing else to watch out for

 

[jberryhill]

However there is a trademark application still pending.

Is it a 1(a) or a 1(b)?

And if it is a 1(a), was it filed with a specimen of use?

 

[bojan1]

Is it a 1(a) or a 1(b)?

And if it is a 1(a), was it filed with a specimen of use?

I think it is 1(a) and the answer is yes.

Thanks for your insight!