Calling All Armchair Trademark Attorney's (Warning: Business Thread)
 

If someone owns the .com of a business, but has not trademarked that name can a person register the name and acquire the .net or .org and then have legal recourse to take the .com?

I know that if a business or person uses a name without registering the trademark then they can be forced to only protect their name in the geographical location the are using the name, but does that protect the .com as well or only the name?

Does one have the legal basis to ask/request the person or business to give up the .com or cease using the .com if one is able to trademark the name?

Nissan vs. Nissan
Nissan Motor Sued Nissan Computer For Trademark Infringement,
Trademark Dilution And Cyber-Squatting
Seeking 10 Million Dollars In Damages
http://www.digest.com/Big_Story.php

Although that case is relevant, I think the issue would be that Nissan is a multi billion dollar corporation and I would be going against a person/business with no actual website or actual use of the .com

It's clearly someone just sitting on the domain and not using the words contained in the domain as a business name.

It's hard to say w/o knowing the specifics, even then I'm not an expert but it's a subject I have done some peanut gallery research on. Offhand I would suggest checking into "territoriality" and how it may apply here. Is the person really doing nothing with the domain? Is it just a parked page? If there's any developed web property on that domain they may be within their rights to keep it.

Also they would be the holder of record before the trademark filing, and you'd probably have to make a significant investment into the building of the brand under the trademark and on the .net.. seems risky when there's no guarantee you would get the .com, also you would need to consider the purchase of the .com, while not absolute proof, does hint that you were aware the .com was held by another party prior.

I don't see it as being cut and dry. Have you tried to contact this person and buy it outright? Might be cheaper than lawyers. A good trademark lawyer is going to want around $3k just to give a professional opinion.

the domain in question is a parked page. actually i have several domains that i am thinking about going after for a new business model.

one variation of the main domain probably wont work because there is already a registered mark on the core word (NAME.com is registered, but THENAME.com is available).

i don't think i will waste time on the above.

back to the parked page.. it appears that the owner of that domain since 2006 has done nothing with the name. this is the name i am going after.

i'm not concerned with the cost if i can ultimately take the name.

i am concerned with whether i should make an offer for the name or just try to register the mark. i can set up a corp with the name and then try to reg the mark.

i just would like to hear some opinions on which direction is best to take before i write a check to a decent tm lawyer..

I have a .info domain name. It is a name.info When I bought the domain name nobody owned the trademark for it. This I'm 100% sure of. I worked with the person in question to create the website. She gave me exclusive details to make her biography fabulous, gave me exclusive interviews to post, etc. I clearly made this website with her knowledge and consent.

Later on she would become a contract with a big company, who then trademarked her name and acquired the .com, .net version of the same domain name that I own the .info for.

Now they are bitching up a storm because they want me to stop using the domain name. As much as it is an easy win for me, I still have to go through the hassle of hiring a lawyer. This crap cost me money but that's the thing. I was willing to put up the money to to piss off the party in question. Most people don't have a few thousand laying around to deal with it and just cave and give up the domain name in question.

So I guess what I'm getting at is consider that as an option and maybe try pushing your own legal weight around and see if you can get them to cave that way.

i think that the owner of the domain in this case would cave right away if i had the tm. of course i would rather just buy the domain from him, but these days all these people think a .com is worth 100k and i dont know if i offered to buy it and he said no and then i tm the name, would he have more ammunition in court later on down the road...


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Domains and trademarks are a complex subject.

I would simply try to purchase the domain... do it anonymous if you so wish.

Getting the trademark and then going after the domain is not a great plan...if it went to court you would most likely lose.

The main thing to think about when going down these or simlar routes is... can and are you ready to accept legal bills and all the other associated fees and time.

Think hard....the profits/losses ...and is the project/idea worth the effort/cost.

This was going to be my next suggestion. The original owner of the domain does not need to know exactly who you are / represent to make contact and try to negotiate. That will also help you to feel the person out to see what their frame of mind is.

Unfortunatly this world is full of people that hold out hope some huge multinational corp is going to want their domain and throw millions at them, but for every one of these there are probably five that have come to grips with reality that this day is never going to come.

Probably the hardest ones to deal with are the Billy Dreamers that haven't taken the time to construct a real business plan but are going to build something awesome someday. They won't sell to you because their dream is going to be the next big thing or because they have "artistic integrity". It kills me some of these guys who hold out and still have parked pages years later :disgust

Once a name is used in commerce then common law trademark rights attach. We have a first in use system not a first to register which means that you could be blocked from even getting your trademark.

However there is a recent case that could make a superior rights holder lose those rights to a minor holder --- IF -- the superior rights holder failed a false or misleading application and thus it would be considered a fraud upon the trademark office. -- The case is Medinol - just google it.

Is there any case law about whether parked pages count as used in commerce? You could probably argue against that.

this name has never been used in commerce which is why i thought i even had a chance and it would be worth a fight..

it has been a parked page since reg in 2006.

while i respect the insight of the domain owner, i think they have had more than enough time to develop it...

the question is, would a court agree with my opinion..

i will use the name in commerce immediately, even before i offer the current domain holder an offer to buy the domain if thats the right strategy...

i appreciate the comments thus far..... :thumbsup




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Generally, the first user "prior use" has superior rights.

Just because there is no registered trademark does not mean there is no trademark right. Common law trademarks can also exist.

In my view ..no matter what you do you will not be able to obtain this domain other than if the domain owner wishes to sell it you....based on the facts you have presented so far.



Ps..As a side note does the parked page have any basic links on it even if just godaddy parked pages..if so thats commerce ...or is it a totally blank page....as you dont find those often.

even on a parked domain?

my understanding so far is that prior use may warrant a geographical exemption, the tm holder will still be able to uphold the tm rights outside of the prior use geo area provided the original user was only operating in a geo area and not nationally.....

its a godaddy parked page... so then the question becomes, who benefits from a parked page, godaddy or the domain owner...

and does a third party benefiting from a parked domain constitute commerce?

I do believe you have to enforce your trademark and if you don't it will be voided.

Of course first in use is very important. Had a guy tell me that one of domains infringed his domain and business name. Just a similar spelling. (one letter different) I ended up finding a guy who had a shorter version of the domain registered before his. I sent him the domain name and told him an other guy is actually the first to legally hold the name...end of domain dispute. Nobody enforced copyright or trademark and therefor it was not even an issue.

Now you can start to see my earlier reply starting to show......Domains and Trademarks are complex issues that will result in legal advice etc ....and will start a route to success or possibly an expensive waste of time.....leading to failure.

Think it all through very careful.


Ps....Yes its still used for commerce if someone is getting $$$$$$ from it.

update: i just checked again and i was wrong there is no parked page for the domain, it 404's to a blank page..

Yeah, this stuff is, there is so many little gray area's I think that's why.

Seeking an Intellectual Properties lawyer is seriously worth the money, it's cheap to do it on your own, but well worth the money to have a lawyer do it.

I did one on my own starting out, had a hard time getting it approved, finally did, then found out I left a bunch of things out, so someone if need be could have exploited me anyways.

Paid someone, and I think I'm good to go, they didnt forget anything and had no problems getting approved for things, I may have. Well worth it.

He even covered things I never thought of , just in case. Turns out, great move. :thumbsup

Good luck, hope you get the domain to put to use, since it's just being squated on:pimp.

Ok...then you then have to consider this.

Most domains when registered simply go to a parked link page ususally to the registrar...if its going to a 404 page someone at some point pointed it and/or changed nameservers etc...maybe its been used for commerce and not just at this moment....

My point is this type of domain/trademark issue situation can go on and on and on...costing both time and legal fees.....easier route is to simply buy the domain..or give up the project unless its a huge possible money earner and you want to persue it.

The law is certainly on the side of legit business owners. Domainers are usually the ones fighting the uphill battle even if their domain registration pre-dates the business that is after it.

However if the domain is overly generic such as Monkey.com, TheSkyIsBlue.com or Clocks.com, you are probably out of luck. This makes the "confusingly similar" portion of the argument difficult.

No, parking does not count as use in commerce.

In fact, WIPO has a recent history of taking domains away because they were parked and the ads being displayed were competing with the TM holder's product or service.

The process is actually fairly simple. You file at WIPO for $1,500 and a pannelist decides the case. All registrars respect the decision.

Let me add that the pannelist does not go out of their way to research things. So if you put together a solid case and the other side is pretty much "This isn't fair, I registered it first!" then he is probably going to lose. And a surprising number of defenses are shallow like that.

Yes it does count as commerce...you next statement states it......"The WIPO took away the parked domain because the ads displayed competed against the TM holders"....

I f you park a domain say "BMW "and it goes to a parked page with links on the parked page to car sales or simlar you are profiting from thier brand ( thats commerce)

I guess you also know about ?reverse domain name hijacking? ..I disagree that its all so simple.....try it and you will find out !

totally, I learned the hard way and I read and read and read on what to include and still not worth my time it took and to not be totally protected. I got a pro to take care of the it second time around. Different biz tho. Let the first one go.

it certainly all depends on your area your are in and what you want to do with it exactly, international (the web) can get tricky depending on the nature of the domain/business for doing business internationally, but if your on the web but stick to your local area, you can get away with more, per se.

I agree ThumbKing....you did it the correct way in my opinion....:)

lol, always gotta learn the hard way though eh :winkwink:

They can blow me

Yep..I think thats how most of us learn .......:1orglaugh eventually.

You know what I meant.

Parking does not count as legitamate use in commerce that allows you to establish definite usage rights.

TM rights are not established by registering a domain and sitting on it. If someone else comes along and establishes a business around the keyword(s) in the domain, you may be at risk of losing the domain. This is not reverse hijacking. It's called time passing the domain owner by, and it has happened many times.

Reverse hijacking is where someone can't obtain a domain, so they register a TM and then run to WIPO with it crying bloody murder with not much else to back it up.

But again, the most important thing is the nature of the domain. How generic or unique is it?

To the original poster.... how do you know the owner of the domain name isnt using the name in another fashion for commerce???

For example I owe a pizza place that sells special cream-sauce pizzas and I name my place Creamed Pies.... I put it on my sign I take out a phone book ad and then I buy my domain name www.creamedpies.com but I never build my site.

You can try but I will bet you will spend at least $5000 in attorney, trademark and search fees trying to do what you want. It may work, but it may not. It will be a gamble.

Is the domain name worth the investment ?