We began using the moniker "Internet Electrician" on our website (electrical-online.com) back in 2004. Newbies that we were, we didn't think of registering the "internetelectrician" domain until much later in 2010. The domain and variations of were already registered but not in use. We filed our trademark application (u.s) in 2010 and were granted the trademark in 2011. Before we were granted the trademark, we approached the owner of the internetelectrician.com domain name ("Link-u-want.com") and they advised that the domain was for sale for $8K, but could be leased on an annual basis for $500/year. We agreed to the lease of the domain. Now owning the trademark, we feel we have rights to the domain. We advised Link-u-want that we now own the trademark. We didn't plan on screwing them out of their $8K, but trademarked the name as a due course of business. We have used (and proved this to the Trademark Office) the name extensively since 2004, using throughout our website, on all of our social media channels, and on all of our e-documents. We made the point to them that we have paid them $1,000 over the past two years, and would be willing to negotiate a fair deal, but not $8,000. He responded by saying "tough luck", and that if we didn't renew our lease, the price was going up from $500/year to $1400/year. I have the feeling that this charming gentleman will be happy to sell this domain, knowing full well that it is trademarked, to some poor sucker. Any suggestions on this? We were also approached by a competitor who owns the domains "theinternetelectrian" and "the-internet-electrician", who acknowledged that we use these terms extensively, who offered to sell these two premium names for $3500. No websites have been set up using these domains at this time. Do we proceed with trying to secure these domains or do we wait and see? It's extremely frustrating! I hate to have to fork out money for lawyers, when people should just 'do the right thing'. If we were Google, this would be a no-brainer, but we are small operators who are trying to protect our interests. We've since registered whatever versions we can just to stop this from continuing to happen.
A trademark aims to prevent consumer confusion, not necessarily grant some magical claim towards any and all namesakes for any and all other uses. It may be frustrating, but that's because you are entertaining some rather - shall we say - unrealistic expectations of what trademarks actually do. By agreeing to that lease, you essentially also acknowledge their "ownership" of that domain name. I won't be surprised if there's some term in that lease covering this scenario you're describing. And as you noticed, doing the "right thing" isn't always as obvious. At the end of the day, whether something is "right" or not - unless defined by enforceable law - essentially depends on what people agree on. Besides, you can always make that $8,000 or so back eventually, right? But if you feel the principle of asserting your so-called right over someone else who didn't even know of your existence to begin with - until you approached them first - is greater than that, then you best seek a lawyer with real- world experience in this. Good luck. You'll seriously need it if you really want to pursue this matter.
I think you have rights to use the term you trademarked and they have rights to use their domain in any way that does not infringe on your mark. I think there are many ways to use that name in ways that do not infringe on your mark. (for example, an online directory of electricians.) Certainly, they could sell that domain or lease it to another person who has a business other than yours. I think you need to negotiate the best deal possible to buy if you want that domain name or move on and invest your time and money in another domain.
So what gives you the right to file a trademark and assume anything related to it that were previously registered? I mean that's not right to anyone that didn't file a trademark and could of started it WAY before you, not saying that's the case but being it could of been. It boils down to if the guy uses the domain to hurt your company or profit from it, by using your name you can legally TRY to sue him, I say TRY because most of the time it's really what the judge want's to do, and lots of headache and legal work then it's really worth. All in all you screwed yourself by thinking you could bully the guy out of the domain by doing what you did, and normally I would stick up for someone like you but you deserved it, I mean you threaten the guy after he was trying to work with you, and just because you don't like the price you threaten him? I'm surprised he didn't bother to charge you more, If you like the domain so much, pay for it, or don't use it but don't try to tie up our legal system over your frivolous lawsuits. What have you learned? Don't think you can re-work the legal system, and you just screwed yourself either you pay more, or buy it, or don't use the domain, you have no other legal options, and even if you did take him to court, you would waste a few thousand just TRYING to seize control of his domain, and having the domain panel see what you did, will most likely make you lose when they vote.