Hello, I'm in the process of incorporating my business and purchasing domain names for the company, someone already owns one of them though. If I own a registered trademark with that name, along side a incorporated business, do they have to forfeit the domain name to my company? If I press legal action that is.... They have owned the name for a couple years, and there is literally nothing on the website except a domain name search.
No, not exactly. If they registered before you achieved trademark status then you can't use the UDRP to claim the domain. They must have registered it knowing you existed and did so in bad faith to profit from your good will. It is a little different than the ACPA. If they own the domain but change the content after they realize you are out there, then the ACPA might provide some relief.
So there is nothing I can really do other then ask for them to sell it/transfer it to me? Alright ya, I've consulted some legal counseling, but for now I've come to the conclusion that there isn't anything I can do until I have finished incorporating and trademarking everything. Thanks for the help
Even if you have a trademark that alone is not enough to take someone's domain. They would have to be using it in bad faith. From what you describe, it sounds like there is a good chance they have the right to use the name in a non-infringing manner - especially if they owned it prior to your business and attempted trademarking of the name.
This piece of (junk?) mail that I got today might apply to this thread: "Dear President/CEO, We are a domain name registration and dispute organization in Asia, which mainly deal with the global companies' domain name registration and internet Intellectual property right protection in Asia. Currently, we have a pretty important issue needing to confirm with your company. On Dec.17 ,2008, We received an application formally.One company named " XXXXXXX investment Company " wanted to applied for the Internet trademark " XXXXX(my business website)XXXX " and some domain names through our body. During our preliminary investigation, we found that these domain names' keyword and internet trademark is identical with your trademark. Meanwhile, it is in the special time of financial crisis. Many companies are registering and protecting their own internet intellectual property right in various methods.These days we are dealing with this case, I wonder whether you consigned XXXXX company to register these domain names through us? If yes, we will complete the registration on these domain names. Or you do not even know this company what so ever? Currently, we have postponed this application of this company temporarily already. In order to deal with this issue better, please contact us by telephone or email as soon as possible. Best Regards, Ivy Ji Auditing Department TEL: deleted FAX: deleted Email:xxxxx@westdns.org Web: west-technology (dot)net" Not sure what they are after or if it's just a way to get traffic to their website that's not indexed yet.
Why is your email spam relevant to this thread? I have received that email many times, it is meaningless spam that should simply be ignored and deleted.
Hi dev-ebusiness, It depends on a number of issues: _when you registered for trademark? This is not the ultimate problem solver. _What's your company name and website name? If it's generic, I doubt you'll be successful claim the name to yourself. _How successful and well-known your business was prior and at the time of domain registration. If your business is very succesful, you stand a better chance. _And the scope of your business in terms of operation and location. what is your business doing? what is the website used for now? where is your business operating? where is the domain registrant's residence? Could it be possible the registrant might heard about your business?
BTW: If you establish trademark rights through registration, then any change in use of the domain you mention may create new arguments of trademark infringement. Your registration of your mark will also limit the use of the target domain and thus potentially limit its value o the open market. There are many people who launch a business or product, obtain trademark rights and then wait for a change of use which triggers rights under the UDRP or ACPA. __________________ EnricoSchaefer, Traverse Legal, PLC Internet Law & Trademark Registration Attorney