Hi guys, I have this domain name since october 2004, a .net domain. Since the beginning, it has been developped as a business. I have staff, advertisers, everything. I have registered a trademark only in february 2007 that was finally accepted in july. One of my competitor has registered the same domain but .com one month earlier , in sept. 2004. I have screenshots that prove that this "site" was a GoDaddy parked page until late 2006. The guy decided then to make a one page site to show a pseudo logo with his dot com name (my trademark), big leaderboard adsense, a newsfeed coming from his site and various links to his own website. Just so you know, im receiving around 20k unique a day so for me, the guy is clearly getting visitors and making money out of my business. What do you think about that? Any of you know specialized services or lawyers for this kind of dispute? Or would it be easier and cheaper to just offer him 1000$ for the domain? thanks Yanik
Trademark rights usually rest with the "first to use" and "continue to use" for a particular classification. You likely have no legal right to the .com since it was registered before your .net which removes the argument that this person went out and attempted to ride your goodwill. Since you stated the .com was only a parked domain, he probably wouldn't be able to make that claim against you, even though he registered first. Even though you have a registered trademark, the mark is contestable for a period of 5 years from publication - i.e. anyone can dispute your right to the trademark. You didn't say what your site is about, but if the .com is being used in a different, non-overlapping usage, you wouldn't have a good trademark infringement claim. Trademarks are granted by classification, so in theory, you could have 40 different people owning a trademark on the same word (each a different usage). For example, MySpace has several trademarks by different people. I guarantee that it would be cheaper to pay a thousand (or several thousand) to buy the .com vs. a costly trademark dispute. If you approach the person to by the .com, you obviously don't want to tell them you own the .net.
Well, even though he registered it a month before you you might win in either an ICANN domain dispute or in court. That is because he has not shown any intent is using the site. However, since he did register before you might lose. Particularly if he had a brick and mortar store operating under that name before. If you can get the domain for $1,000 it would probably cost you less than either going to court or an ICANN UDRP. If you offer that much out of the gate, though, the owner would likely ask for much more. Start low and let them come back with an offer. @mjewel - it's not simply first use. First use only applies when an actual product and/or business is attached to it. The simple act of registering a domain name and parking a page is not sufficient for commonlaw trademark.
As I said, the owner of the .com would not likely have a claim, however, there are businesses who are already using a name and register a domain without using it immediately. For example, a mom & pop who had a brick & mortar business call "Blue Fox Tea" and registered a domain at some point after would still have prior usage rights even though they never used the domain. In fact, even if they didn't ever register a domain, they could still have an infringement claim. That is why paying for a trademark search (not just checking the USPTO website) is very important.
As I also stated, the original domain owner having used the name for a business or product (even if the doamin had not been used for such) would give them legitimate rights to the trademark. Having registered the domain prior to the registration of the trademark is not an absolute bar to the trademark holder obtaining the site. It makes it much harder to do so. The changing of the parked page to a logo right before the application of the trademark could be seen as bad faith usage if the tm owner could show a high likelihood that the other domain owner was aware of the impending trademark. That is true both in court and in ICANN UDRP. mjewel and I both agree, however, that if you can get the domain for $1,000 that it will be far cheaper than the alternatives (which are dubious chances at best).
Thanks for the replies guys! Just to make it clear... The guy doesn't make any business outside of the Internet, he simply have this website he monetize through adsense and some partnerships in the industry we're in. Since he's a direct competitor, and that he uses the .com just to redirect people to its main site ( with a totally different name), I think a claim would be legit. I think that would be easy to demonstrate that he uses our name at his own profits. I know I have good chances to win a dispute, but according to your answers and opinions I gathered here and there, it seems that it would be a lot more easier to simply buy it if I can. We already had some discussions with him a few months ago, before we had the trademark allowed. If I remember, the last offer from our side was 1000$, but he didn't want to go lower than 1500$... well, no big deal I guess! thanks for you help! Yanik
The most basic ICANN domain disputes (single panelist making decision and only one domain in question) cost from $1000 - $2000 dollars just for filing. There can be other fees, plus the time involved. On top of that, there is no guarantee that you would win. Taking the issue to court would cost even more than that.
If the other party registered a domain name prior to you registering yours then you would have absolutely no claim to make him stop. In order to have a claim against another for a domain name dispute you would have had to have a trademark registered at the time the other party registered the domain name and there would have had to been bad faith. The domain name rules are set up to allow first come first serve unless there is some kind of bad faith at the time of the registration. Because you did not have a trademark and did not even have a domain name at the time the other party registered then there is absolutely nothing you are going to be able to do from a legal standpoint. Your only option is to try and purchase the domain name from the other party. -Gene Patent Attorney and Founder of IPWatchdog.com