Trademark issue on my domain name

[cmme2]

I received an email from a lawyer representing a pharmaceutical firm reagrding a parked domain name I own. The domain name contains the name of the drug this company has TM on. Basically domain name has "order" in front of the "trademarked name". According to their claim the parked page displays ads of online pharmacy they have issues with. The ads on parked page are not dispalyed by me and how pharmacy's sell their products is their business. They want me to transfer my domain to them.

My lawyer is working on this but I was wondering if anyone has had such issues and how they handled it with what outcome..Thanks

 

[labrocca]

Say goodbye to the domain. You are clearly infringing. Have your lawyers look up cybersquatter laws.

 

[cmme2]

we are in a business to develop health websites and we reserved this domain for future use for our consumer help/guide website. we have almost 13 websites up and running and have 20 others in works. So, I am not sure cybersquatting could be an issue..

I am looking for input from someone who was in similar situation and how the issue was handled..thanks

 

[Peter]

Anwer this question. Did you order the domain name because of the name of the drug or was it coincidence?

Also you are responsible for what is displayed at your domain name not the parking company.

You are infringing 100% on a trademark by the looks of it and you are trying to profit from that infringment (otherwise why do you have it on a parking page with adverts).

 

[Erdy]

When you registered that name did you register it thinking of the trademarked product or brand? If so you should give the name.

 

[DNQuest.com]

we are in a business to develop health websites and we reserved this domain for future use for our consumer help/guide website. we have almost 13 websites up and running and have 20 others in works. So, I am not sure cybersquatting could be an issue..

I am looking for input from someone who was in similar situation and how the issue was handled..thanks

You are in the business of cybersquatting... end of story. Others have done it to, they are called respondents and lose their domain....

READ MY SIG

 

[Broker]

What if he registered the domain before said word was a TM?

 

[DNQuest.com]

What if he registered the domain before said word was a TM?

Sorry, did you read the post?????? His "company" registered a drug name with a TM and put "order" in front of it. What more do you want???? Sorry, but reading a whole is sometimes a good thing. BTW- why would you order something that does not exist??

UGH

 

[Broker]

Sorry, did you read the post?????? His "company" registered a drug name with a TM and put "order" in front of it. What more do you want???? Sorry, but reading a whole is sometimes a good thing. BTW- why would you order something that does not exist??

UGH

LOL, yes I read the entire post. I dont know what the "word" is nor do I care. My question remains the same.

 

[DNQuest.com]

he registered a TM drug name and put the word "order" in it. Then had it parked and the ads have online pharmacies.....

Are you saying he "invented" a drug name and low and behold, there it is???

UGH again

sorry, classic squatting here.

 

[jberryhill]

he registered a TM drug name and put the word "order" in it. Then had it parked and the ads have online pharmacies....

And is one able to order that drug from those pharmacies?

 

[Peter]

And is one able to order that drug from those pharmacies?

Does it matter? Say for example the online pharmacy sells competing drugs surely that would strengthen any case the company had in pursuing the domain.

Also as the trademark is obviously in the drugs market the fact he is using the trademarked name in the same market surely would strengthen bad faith claims?

 

[DNQuest.com]

Does it really matter if it is "competing drugs" or selling the drug mentioned in the domain? The art of cybersquatting is making money from a TMed domain. Is the domain TMed? Yes. Is the domain owner making or attempting to make money from the TMed domain? Yes.

It isn't like there are 2 different drugs with the same name out there. And drug names are not generic (though I wonder, what if a drug company decided to make a drug called "windows"). So basically, is the guy trying to make money for a TMed domain? yes he is. And if his lawyer spent over 5 mintues reviwing this, he needs a new lawyer.

 

[Peter]

Does it really matter if it is "competing drugs" or selling the drug mentioned in the domain? The art of cybersquatting is making money from a TMed domain. Is the domain TMed? Yes. Is the domain owner making or attempting to make money from the TMed domain? Yes.

Firstly I was addressing jberryhill. He seemed to be implying if they sold that drug then there was a problem.

To answer your question it does matter if the domain is used to advertise competing drugs. There is a lesser argument of legitimate use if you use the domain to advertise a competitor of the company holding the trademark you are squatting under.

 

[DNQuest.com]

legitamite use? I guess as long as the TM holder gave him permission, otherwise it seems to me the domain owner is looking to make money from a TMed domain for his owner personal gain without the consent of the TM holder (isn't that what squatting is all about?).

 

[Peter]

legitamite use? I guess as long as the TM holder gave him permission, otherwise it seems to me the domain owner is looking to make money from a TMed domain for his owner personal gain without the consent of the TM holder (isn't that what squatting is all about?).

There are legitimte reasons for using a trademark in a domain name. Look at sites such as paypalsucks.com for example they 100% use the trademark in the domain name but paypal cannot take down the site.

I do however agree that cmme2 has 100% shown that he is trying to profit from the trademark.

 

[DNQuest.com]

there are legitamite reason, but I am guessing none of teh reason would be monetary gains... yes, he is using it in bad faith. There are a ton of what-ifs, but deal with each one case by case.

So if I had orderwondows.com and sold windows software, I would be ok?

 

[Peter]

So if I had orderwondows.com and sold windows software, I would be ok?

Where did I state or suggest that would be Ok. You are making arguments for the sake of it.

 

[DNQuest.com]

No, not trying to start anything. It was in response to the legitamate usage post prior to mine. I was giving an example for what this poster was doing for people who may be reading this thread and put it in terms everyone could understand.

 

[IAmAllanShore]

My lawyer is working on this but I was wondering if anyone has had such issues and how they handled it with what outcome..Thanks

Your lawyer is "working" on this? If you are legit, then that seems to be milking a non-issue, no?

Unless the drug is something like "asprin" or a term like "anxietymedicine" (Or a compound name that isn't TM'd), then this is kind of a 2 minute phonecall consultation and then move on.

Not asking you to tell us the drug, but you have to know if it is/could be/would be/might be blockbuster for them, they will defend their mark aggressively.

Just a brief NAF glance:

464558 drcialis.us Lilly ICOS LLC v Joe Pestrak USDRP 4/20/2005 Transferred 5/31/2005
788279 buycialis.us Lilly ICOS LLC v Andrew Riegel USDRP 9/8/2006 Transferred 10/18/2006
110783 celebrex-pain-relief.com, arthritis-celebrex.com, 0-celebrex.com, viagra-propecia-xenical-celebrex-claritin-prescriptions.com G.D. Searle & Co. v Entertainment Hosting Services, Inc. UDRP 4/25/2002 Transferred 6/3/2002
112559 e-viagra-xenical-celebrex-propecia.com G.D. Searle & Co. v James Mahony UDRP 5/1/2002 Transferred 6/12/2002
117905 1st-celebrex-viagra-pharmacy.com G.D. Searle & Co. v 24-dollars-for-3-pill-viagra-trial-pack.com UDRP 8/12/2002 Transferred 10/2/2002
117909 a1-drugstore-buy-viagra-xenical-propecia-celebrex.com - UDRP 8/12/2002 Withdrawn 8/29/2002
117911 doctorslink-viagra-xenical-propecia-celebrex.com G.D. Searle & Co. v Fred Pelham UDRP 8/9/2002 Transferred 9/19/2002
117914 viagra-celebrex-xenical-cipro.com G.D. Searle & Co. v PNP Management UDRP 8/12/2002 Transferred 10/4/2002
118168 viagra-propecia-celebrex-xenical.com G.D. Searle & Co. v Optimized Marketing Services UDRP 8/13/2002 Transferred 9/19/2002
118181 order-viagra-propecia-celebrex-xenical-online-discreet-shop.com G.D. Searle & Co. v Damien Wallace UDRP 8/15/2002 Transferred 10/7/2002
118276 viagra-xenical-propecia-celebrex.com G.D. Searle & Co. v SD Domains aka Steve Dyke UDRP 8/19/2002 Transferred 10/11/2002
118277 viagra-xenical-celebrex-propecia-meridia-zyban.com G.D. Searle & Co. v Martin Marketing UDRP 8/20/2002 Transferred 10/1/2002
118306 viagra-xenical-celebrex-propecia.com G.D. Searle & Co. v NA UDRP 8/20/2002 Transferred 10/7/2002
118307 viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com G.D. Searle & Co. v Paramount Marketing UDRP 8/22/2002 Transferred 9/27/2002
123927 xenical-viagra-phentermine-celebrex.com G.D. Searle & Co. v Innovative Solution Technologies aka Vedavyasa Alapati UDRP 9/3/2002 Transferred 10/23/2002

(Basically, a lot of "Sorry, you lose. Transferred")