I have a company that's been in business for over 20 years. I recently trademarked the company name. I have the domain name .net for my company, but the .com one has been taken by someone. They are not using the site for anything, and there's no way that they can use the name for anything, as it's very specific to the industry. I don't know if this is technically cybersquatting or not. I tried to purchase it from them, but they replied with an outrageous request (5 figures). I did not reply back yet. Should I let them know that the name is trademarked? Do I have a case where I could sue for the domain and have a reasonable expectation of winning, or should I try for arbitration through ICANN, or am I screwed?
Your position is strong since you have trademarked the company name. The domain owner will have to give you the domain and that too for free. In fact you can claim money from them for misusing the trademark name. Just seek legal advice.
thank you for letting me know! I don't think I can make a claim about monetary damage since, even though the company's been around for a long time, i didn't trademark the name until recently. That is, the other party registered the name before I got it trademarked. But I'm going to send a letter asking them to voluntarily transfer the domain over before either they or I have to spend money on an attorney.
If the domain owner is running a site on that domain that is in the same business category of your company, send him a cease & desist letter with a time limit to move it over to you. Hopefully he'll get scared. If not, the only other option is to sue him, and the court costs will be in the $10-15k area
mark - he's not running a business from the site at all. it's just a parked domain name on a nothing site. I'll spend the money on the attorney if need be, but would arbitration through ICANN maybe be a better option? brad - unfortunately, I don't want to run the potential of giving him the heads up, so I hope you'll understand if I don't disclose that info.
he is nt using the domain name to spoil ur business.. and u have recently registered your business.. wat authority do you have to claim that .com ? if the owner doesnt have any idea to use it.. he must give it to you? read the rules of arbitration.. from ICANN.. i doubt that you have the lead in this case.. with the info i have..
arunn - he cn't yuse the nme, as the doman nme is the sme as the cmpany name. i'v bn in bsness 4 over 20 yrs w/ths nme & have proof of it. its been "registered" as a legal entity since the 80's. i only trademarked it recently (another company newly formed was trying to use it to get business off our good name). it's not that he doesn't have any idea to use it, it's my position that he registered it for the specific purpose of squatting on it.
You will have a tougher case if he bought the name before you trademarked it. Trying to get a domain based on this is called reverse hijacking. In order to win an ICANN UDRP dispute (will cost you about $1500+) you have to prove all 3 of the below: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the defendant has no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. http://www.icann.org/en/udrp/udrp-policy-24oct99.htm You can see past decisions at the link below to get a feel for what flies. http://www.icann.org/cgi-bin/udrp/udrp.cgi Good luck.
as tobycoke says.. u must prove all those conditions... 1, 2 is ok in ur case.. but how abt 3??? if he doesnt even use the domain, its hard to prove that its being used in bad faith.... Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
#3 bad faith could be shown if he runs ads on the parking page related to your company or industry. BTW: IANAL.
and he DOES have advertising on the parked page related to my industry, so I think a legit case can be made. Thanks to everyone who posted on this!
Here at work, we went through the same issue with some scumbag who registered our company name with an "s" at the end, who was parking the page...and since we have a huge brand identity, the parked page was pulling all ads within our industry. The corporate counsel here said that our options are to 1) do nothing, 2) start the ICANN dispute process which takes a long time and a few thousand bucks, 3) go to court and spend in the upward of $15k to sue the cybersquatter. Unless you're Microsoft or Google, you probably won't be willing to spend a small fortune in court costs for a process that will take 2-3 years to resolve unfortunately, these bastards have the upper hand and you usually wind up having to find another domain name variation.
well its easier in cases when you can sue the guy and ask for compensation..in general cases, cyberqquatters do not compensate for any losses and you just end up bearing the fee and getting the domain..
Some relevant questions in determining whether you have a viable cybersquatting claim include: 1) had you established valid trademark rights at the time of the registration of the domain name? 2) is the domain name confusingly similar to your trademark (it sounds like it is in this case)? 3) has the registrant used the domain name in bad faith? One factor courts or a UDRP panel will look at is the registrant's offer to sell the domain name to the mark owner for financial gain without having used the domain name in the bona fide offering of any goods or services.