I am interested in acquiring a few .net domains for which we already have the .com and also have a trademark on the name. One of the domains is in pending delete, another is parked and is advertised for sale with a 10000% mark up (yes 100 times its registration price). If the current owner won't transfer the domain on request, should we contact their registrar or should we get lawyers involved? What would be the first and second steps in acquiring a domain we own the trademark on? Thanks.
It’s up to a couple things. If you owned the trademark before they owned the domain(s), then your in better shape. First example; you got the domain, and trademark filed. The other guy registered the domain and ask for money. This is called Cybersquatting (also known as domain squatting). Because they attempted to hit you up for money you can go after them since they are trying to hold your trademark hostage under US laws. This is a very murky area, because you could ask them to hand over the domain, and then they tell you they want money, boom they got hit with an anti-Cybersquatting lawsuit. The key is they just have to tell you they want money, but even then your attorney should be the judge if you should take action. If on the other hand they acquired the domain before you did, or file your trademark than they have room to sit on it if they want. You may be able to get them for Cybersquatting, but if it fails, you could get your ass handed to you with some large fines. In another example, if they got the domains before, or after you got your trademark file, and they try to go into the same market (service) as your doing than you can go after them. Trademark lawsuits are not cheap. Its not to much to think that one could spend 100k just to get into the courts house doors. Your other option is ICANN UDRP. Just a couple thousands compared to getting your attorney, and if it fails you can always go the other route above. There are a lot of options on your plate with prices, actions, and risk. We have owned trademarks on both sides of the questions above. In most cases its not worth going to court, and once in a while the UDRP is good. Normally we just throw a C&D from our attorney and see if they owner runs for his life, otherwise a couple DMCA’s to Google and other services will get the domain removed from most places like search engines, hosting, etc. Thus taking away the revenue and the value. At some point they jump ship as their investment is losing value, and then you can grab it at that time if you want.
l3vi, Thanks for the reply. I think I will use a domain capture service for one domain that is pendingdelete. The other one of concern is listed as for sale so I think I will email him and ask that he transfer it to us and see if he asks for a fee. If the fee is a few hundred bucks, I might go ahead and pay to avoid legal costs.
"Cease and Desist" Heck I hate those letters. Bear in mind the context of the site. Is the squatter selling goods? Or is adwords being displayed? I bet the latter. I would first try and get G to stop displaying adwords, as that is passing off. Take screen shots etc, video Ask for the revenue that they have made from the adwords since the domain was owned by them. Choke the income Threaten what they have made in the past. They will offer to sell. Then get them to hand it over.
Be careful with trade marked domain names. There was a guy here on DP that posted how he was sued by the rayban sun glasses company. He had a domain name with rayban in it, and offered to sell the name to rayban. Instead of buying the name, rayban sued, took the guy to court and got the name from him. This guy would not give a dollar figure, but he lost several thousand dollars on that deal. The whole situation sounded pretty sad. =============== EDIT ================ I searched through DP for the article I was talking about and could not find it. What I posted is to the best of my memory.
Yep. I always say to my friends; my company footprint is small in manpower, large in market, and I always have more attorneys and accountants than I probably really need but if I’m going to swing my legal bat, you better hope its I’m not swinging in your direction. That said I highly recommend keeping a trademark, patent, contract, and general business attorney around on the speed dial. They are worth their time in gold. My guys have saved my neck probably more times than I know, and helped me sort-out everyone else that thought they would make a quick buck from our hard work.
i have a question folks, say i registerd a domain name xyz.com,then say after one month or one year, some company registered xyz as there international trade mark and asking me the domain? what my reaction shod be?
you registered the name before so you have no reason to respond or give the domain...AND do not put ads or offer their service on your site as this violates the law.
If all goes well that's what SHOULD happen...but look what happened with McDonalds.com...some guy registered that because it was his last name and McDonalds came and took it from him without reimbursing him. Pretty nasty stuff.
I would never put anyone off by not responding. If you registered the domain fist but never built a commercial product with it your chances are not great, but not bad if you decide to never do anything with the domain. Edit: [Its important that I add that you can register a trademark today, and get first use as far back as one can provide they had first use.] For example; the other year back our parent company picked up a domain that was already registered, and had 5-6 other people owning domains with other LTDs, spellings, etc. The first thing we did was buy the domain we wanted and insure we acquired the older domains since trademark laws in the United States is first commercial use, first register. Since we bought the domains and acquired all the rights of the past owner(s), we then registered the trademarks. People that had the other domains parked are now dead in the water as they can not build out the domain matching our product because we have first use, first register, and they have not had any commercial use of the domain in commerce. The people that had already built out the domains have some protection, but it can be limited as we took the steps to give us the upper hand as we plan to reach out to the owners and offer them a couple thousand for their domains, but if they don’t…. Its then time to play ball! There are a lot of ways to skin a cat with trademarks. If two companies have the same names, and one company can provide they own a lions share of the market they can provide that they own the rights and takeout the competitor. A Good example would be Wal-Mart or Nike. It’s undisputed that their names are linked to what they do, and they own a large share of the market, even without their marks they have now. So if by some odd twist they never registered it, they could still win based on market share if they did not have first use. The way I look at trademarks or any C&D, DMCA is simply what its worth to me. Some years back I had a company send us a C&D for a favicon that was a heart. I know the icon was good because I made it, but the other company was without question going to take action because they felt we had stepped on their rights, and thought they had found a way to get some money out of a bigger company. We looked at it and said it’s a favicon which was not worth the time it took to create it, so we pulled it, and decided to use that event as a reason to make a new/better one. You have to take each event case-by-case, because there are no laws that say one can not take legal action just because they don’t like you. If the one taking action just plants to break you they are betting it’s not worth your livelihood.
Thanks boys for commenting on my question. i found this intresting http://www.bitlaw.com/internet/domain.html
I've read somewhere about this too He was also trying to use the domain to sell their products if I am not mistaken.
if the other guy got the domain before you registered your trademark then you cant get the domain from him at all. Having a domain at 100 times more the registration price is nothing, bro i know people who have sold domains for over 10k times more they are worth. I.e how much would you sell sex.com for , answer for you i guess millions. If i was selling counter tops, then my "sex.com" domain would definately be countertops.com and i would go to heaven and earth to acquire that domain. Its that simple, truthfully dont bitch about the domain just pay up. Yeah i know you own the trademark but i guarantee you this - you are wasting time especially if you are a small company trying to scare this guy off. If the domain is expiring be careful too, that doesnt mean that you will get it - nooooo someone could snatch that domain from you in an instant. Offer the guy who owns the domain some sort of compensation or try to work out something. i recently owned a football players domain and the agent wanted it. Well he went about threatening me about getting the domain, i knew especially with name domains that it would be tough as fuck for him to get the domain back from me. "meg whittman for governor" so what did he do.. not only did he get me football tickets to the carolina panthers game, it didnt cost him jack shit. He didnt waste time with nonsense things and just kept the eye on the ball. ANother example, heineken.com was originally registered by some kid and you know what they did to get it back, they flew those guys to ireland and gave them a tour of their factory and all the beer they could want. There are two ways to go about this, the easy way or the hardknock wasting time lawyer way. You will spend more than you can buy for that domain. And i amthinking that domain is about 800 bucks so just get it. HOpe this helps
Also the TradeMark holders are very fickle. Suppose we are selling vehicle by manufacturer x, and they are fine with it. Bang. New Managing Director who then thinks you are Satan. I would not touch a trademark now. Just too much hassle.
Another point where this all gets confusing, is when some other *astard registers one of your company names as a trade mark. Thats a pain, and no trademark can protect them. Also when you try and place a trademark and find some idiot in Poland working from his Garage objects. Enough to give you a headache.