Hello, I have a Domain Name that I really love. I regged it not too long ago and was planning on holding it for a while so that I could use it down the road when I eventually get an LLC. The domain name I own I was going to use as my company name.. ... eventually. I currently have no company.. LOL Recently I found that the same DN is regged in the .co.nz version. I've been contacted by the owner of that company and he wants to buy my name for $75. He said that he owns a TM for that name in New Zealand but was unsure if it carried over to the US or my .com name? Any help would be appreciated. Does his New Zealand TM affect my .com Domain name? BTW . . no other ext's. are taken.
Generally, trademarks are country-specific. However, trademark holders have the Uniform Dispute Resolution Policy (UDRP) to solve this kind of "problem". Unfortunately this isn't black and white, especially if you don't know who you are dealing with. If you give a potentially unrealistic high figure, they might think you have a "bad faith" intent to profit from their trademark rights. But if you have every intent to use the domain name for your intended plans, then you might as well tell them that. Good luck making the right choice.
I would not worry too much if I were you. Firstly, Trademarks are generally protectable in the geographical area in which it is being used or expected to expand. This means that if he offers a service only in New Zealand his trademark is definately protected there. If you hold another domain extension and do not offer the same services or products as him, you might keep your domain in a dispute. If that person made use of services to register his trademark in more than on country, he will have protection there as well. This could easilly be seen as his business offering an International service, and you could loose your domain. In your case it would appear that the persons' trademark is registered and protected in New Zealand. What about his business? Is it local or international? You should decide what your chances are of keeping the domain. If you feel there is no chance, sell it to him. There are some examples of products, all the same name, but they have all registered trademarks in their different countries.
He would have to register his trademark in the United States before you do to pursue a next level of action.
Although filing an application and eventually being granted trademark status has a lot of benefits, registration isn't a requirement to demonstrate it.
I've sold the domain name to the company. I think I was a bit more pleased with the price then they were but we both got what we wanted and it was a fast, clean transaction Thanks to all for the help!
Federal trademarks are different than state common law. There is a usage requirement for a federal mark (interstate commerce) while common is just usage in a particular area. It is limited protection and there are restrictions to getting to court. Filing is a necessary evil if you're thinking reasonably large.