Domain name and trademark

Discussion in 'Legal Issues' started by rdc_klaus, Sep 10, 2011.

  1. #1
    I have a domain name and run a website for 10+ years on a name like "gone-phshing.com" (not real name). My real domain name has some unique misspelling in it just like fishing is spelled PH in this example. I have a trademark on the name with the unique spelling in it.
    Some domain squatter owns gonephshing.com (no dash, one name) and is asking $14k for the release of the domain name. Does my trademark entitle me to have a legal claim on the held domain name? Can I force the release without paying the asking price? And 2nd part of my question is if yes, then what are the steps I need to take? Is it worth the effort?

    Moderator please feel free to move to "domain forum" if needed.
     
    rdc_klaus, Sep 10, 2011 IP
  2. mjewel

    mjewel Prominent Member

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    #2
    If the .com was registered before your usage as a trademark, then you don't have a case for a bad faith registration. Trademarks do not give you exclusive rights to a mark, it gives you rights for a specific usage. If they are not infringing upon your usage, then you would have a weak case at best (depends on the actual mark). In any event, $14K is cheap compared to what a court case would cost you.
     
    mjewel, Sep 10, 2011 IP
  3. rdc_klaus

    rdc_klaus Active Member

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    #3
    The other guys domain name was originally owned by me but I let it go many years ago. Its newer then my current active domain and they use it as one of those pointless link/ad pages that link to content somewhat related to the domain names category. I obviously am upset that I let it go back then, but instead of being constantly angry about it I want to now take control back.

    I am tempted to counter offer and negotiate to a lower price and be done with it. Still lots of cash compared to a few bucks domain name renewal.
     
    rdc_klaus, Sep 10, 2011 IP
  4. Rukbat

    Rukbat Well-Known Member

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    #4
    A trademark does give you the right to recover an infringing domain name - for free (plus legal costs). The precedent is at least 17 years old to my knowledge, and may be even older. But the cost of the attorney to recover the domain name might turn out to be higher than the asking price. As in all legal matters, hire a competent attorney (a trademark attorney, in this case, one who specializes in web-related trademarks).
     
    Rukbat, Sep 11, 2011 IP