From time to time, I research domain names that have my company's direct name in it, and see if they're taken. If they are and the domain is being used for profit using the TM'ed company name, a cease & desist letter is sent. Just recently, I came across a domain name (the exact name of the company I work for with an "s" at the end), which is being parked and used for-profit. The problem is that the owner has paid for privacy on the domain, and the WHOIS record is showing Monkier.com's address. If I were to send a C&D, should it be sent to that address? If so, will they even take it seriously?
Having a trademark does not automatically give you exclusive rights to a name. Trademarks are granted according to usage/classification. Without knowing the name, it would be impossible to know, but I'm going to assume this isn't a famous mark as they would have legal representation that would be handling their IP concerns. There are some legal concerns about sending a C&D for infringement and they should really be discussed with an intellectual property rights attorney.
The only exception to what mjewel said is if the name is a "coined" term. Realtorâ„¢ is an example of a registered trademark that is a coined word and exclusive to all classes. Now if the site in question is promoting in your registered class then you might have a cause of action.
If your trademark is registered, Moniker and most other privacy services will unlock the privacy protect on the domain if you jump through the right hoops. Each registrant who uses privacy protect warrants that the service is not being used ot protect trademark protected domains. Further, the Terms of Service always grant the registrar the right to unlock it for any or now reason. Moniker's privacy service tells users that it will unlock the protection if a valid trademark complaint is made. In fact, stripping the privacy protection can provide significant leverage. Once privacy is removed, you can send the threat letter directly to the registrant. You don't need to remove the privacy protect in order to contact the registrant. The whois email - even though it is @moniker.com will still find its way to the registrant. Of course, they rarely respond thinking that privacy is some sort of cloaking device which you will never penetrate. Here are some articles on privacy protect issues and cybersquatting: Use of Privacy Services By PPC Advertisers Supports Finding of Bad Faith Cybersquatting Failure to Respond To Trademark Threat Letters & Use of Privacy Services Can Support a Finding Of Bad Faith WhoIs Privacy Debate: The Invisible Cybersquatter We handle these issues all the time. Feel free to send me an email or give me a call. 866.936.7447
Domain privacy services are often eager to avoid any trouble, litigation, or other domain name dispute. If you send your cease-and-desist letter to the privacy services, or make another appropriate request, the service may strip away the privacy protection or reveal who the actual registrant of the domain name is. Recent UDRP decisions indicate that a privacy service itself can be named as a respondent in a UDRP proceeding.
Thanks for the info. This is actually for a multi million dollar company who does business in 45 countries and has had an international trademark for decades.