Hi. My cousin owns a buiseness which has been registered for a number of years now. It concerns selling cars as well as fixing them. So basically, a dealership. He just now wanted to get into online advertising, and decided to register a domain name. The domain name he wants, which is the exact name of his business, was registered on a couple of months ago. It seems to be about the same type of thing as my cousins business, selling cars. I would like to know if it is possible to take the website through legal means, if the individual does not wish to sell it. I am sorry, I can't give the name of the business or the website, but I hope that someone can help me find a solution for him. Thank You Hades
Does your cousin have a registered trademark? If so, he can get the name back, though it may require a court battle. If he doesn't have a trademark for his business name, then he should get one. You should know that since your cousin was first to use his car dealer's name in business, he is entitled to a trademark for it. If he has a trademark (and if not he can get one), then the guy who owns the domain is committing trademark infringement. Your cousin has a right to the domain. From what it sounds like, the domain owner is trying to make a profit of your cousin's business name. If you really want the domain, you should contact an attorney who handles Internet law. While these forums are very handy and useful, they're not a replacement for a competent attorney.
Yeah. That's what I told him. I just wanted to know if there would be a reason to even get an attorney. Ill ask him about the trademark thing. But his business name isn't like a one type name thing. It's not unique. It's two words put together. His name, and another word. Is it possible to get a trademark for that?
It's definitely possible to use any term (even an acronym) as a trademark. Of course, the $64K is how to demonstrate that, more so first use. If your cousin wishes to pursue this matter legally if the domain's registrant is not replying or interested in selling the name, definitely seek an attorney who specializes in this. For all you know, the registrant might fight back and seek damages for a possibly frivolous action. Things go both ways.
Well. I checked on the uspto.gov site, and it's not trademarked. So, basically all he has to do is trademark the name, correct? And, are you serious, is it gonna cost 64k? Wow. Thanks Hades
Is it a specific name? or is the buisness name something like, CarForSale or Cheap cars! than tough luck but if it's quite specific you might be able to get it back if its trademarked.
It is not $64k lol. It is $325 to file for a trademark electronically. http://inventors.about.com/od/inventing101trademarks/f/Fees.htm
It's not like cheap car sales, or anything like that. If i had to give an example, it would be something like "Joe's Pizza" or something like that. Is that trademarkable?
Even if you trademark it now...it wont serve much purpose because you have a trademark after the domain was purchased and domains are on a first come first serve basis. Example: I have a business with the name 'xyz' and 'xyz' is not trademarked. I plan to register 'xyz' but it isnt available. I trademark 'xyz' after the domain was purchased by someone else. You most probably loose the case because the domain was purchased before you filed a trademark. Most notable case: Wii.com
I see. Ok. Thanks. Unfortunately, I can't contact the guy because he has the whole "domain by proxy" thing on his domain, and some private registration thing as well. Seems ill have to shell out 60$ just to see if he wishes to sell, and then actually buy it at his price. I think ill tell my cousin to still do the trademark. I think it's worth it. Thanks Hades
Well, there must be hundreds of people named Joe who own pizza places. I wouldn't have thought it possible to trademark something like that. I think you would be just throwing money away. If you had been the first to come up with the name "Google" then obviously it would have been worth trademarking that to stop somebody else using it. But I don't think you can trademark people's names.
A user can configure their Domains By Proxy to un/forward emails. Give that a try and hope for the best. In any case, good luck to you and your cousin.
If he applies for a trademark and it is not granted, the fee is not returned. It is hard to say since you don't want to reveal the name, but from the example of Joe's Pizza I would say no trademark will be granted. There are trademarks for similar names, but generally they need to be very well known (not a single dealership). However, while the words probably cannot be trademarked, he could apply for a logo trademark. A stylized logo with the words could be trademarked. Having a registered trademark is not a requirement in either ICANN disputes or court disputes. However, ICANN likes unregistered trademarks less than the courts do. Secondly, even if the trademark is not registered it must be worthy as a trademark and given the example I don't see it. As far as legal recourse for gettin the domain, from the info provided I would say he'll have to pay for it.
yeah. well ill see if ther is a way to contact them. I did a search for both his company name and "joes pizza" whiel joes pizza returned many results, his company name didnt show up at all. (granted i only looked on the first 4 pages) Well thanks to all you guys.