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  1. #1
    SitePoint Addict clearweb's Avatar
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    Question Customer Trademarked Their Name, but Someone Used It for Their Domain Name!

    I have a customer that recently trademarked their business name with the U.S. Patents and Trademarks Office. Come to find out, somebody has already purchased a domain name with their trademarked business name.

    My customer has contacted the domain owner to see about getting the domain name, but the owner won't budge, unless my customer pays $900.00 for it.

    Can my customer take legal action and and get ownership of the domain name, or does this not apply with regards to trademarks? Has anyone ever dealt with this?

    I know my customer needs to speak with an attorney, but any help/advice would be greatly appreciated!

    Thanks

  2. #2
    Non-Member demosfen's Avatar
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    The short answer is yes, he SHOULD be able to sue and get the domain for free. The thing is, if he's going to hire a lawyer it may cost more than $900. If you can't settle it without court, the two possibilities are (a) sue and represent yourself in court or (b) just pay $900
    Does the other party realize that legally he has to turn the domain to you? If not, perhaps send him some court cases, etc. Perhaps he doesn't budge because he doesn't know he has to.

  3. #3
    SitePoint Wizard silver trophy
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    Who registered the name first? Your customer in the trademark process or the domain holder?
    - Ted S

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    SitePoint Addict clearweb's Avatar
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    Quote Originally Posted by demosfen
    Does the other party realize that legally he has to turn the domain to you?
    I guess not. My customer has emailed the owner of the domain name and told them that he has trademarked this name and would like the domain name turned over to him. He doesn't get a response.

  5. #5
    SitePoint Addict clearweb's Avatar
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    Quote Originally Posted by Ted S
    Who registered the name first? Your customer in the trademark process or the domain holder?
    My customer has already gone through the whole process and trademarked the name. The owner of the domain name had the domain registered beforehand, but has never had it trademarked.

  6. #6
    SitePoint Wizard silver trophy
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    Unfortunately that is probably a very bad thing for your client. If you read cases on domain and mark disputes, the first one to register often keeps it, so long as they do not suddenly change the site to directly infringe on the mark holder's business. A trademark is powerful but it's retroactive. If I come up with a business name today and someone else was using it last year, I'm going to be very hard pressed to stop them, regardless if they registered it or not.

    With that said, most of the cases and law I've seen indicated that in these situations the site owner becomes limited in what they can do in terms of selling the name or altering their business.

    Cybersquatting can also be a good way to pry a name from someone, but that also only applies if the person is indeed squatting on the name. If they are using it and only offer it for sale after being approached, that's a lot different than if they had some unused name and are now trying to turn it into a pretty penny.

    However, I'm not a a lawyer, and your client needs to talk to a lawyer to find out the best course of action for his/her individual situation.

    Here are some relevant urls on this situation:

    http://www.cpradr.org/ICANN/icannDec...010-001110.pdf - A case (decided by arbitration) in which a trademark holder argued that someone using their mark in a domain should be forced to stop. The ruling was that it should not be transferred to the trademark holder.

    http://arbiter.wipo.int/domains/deci...2006-0001.html



    http://www.icann.org/udrp/udrp.htm
    - Ted S

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    SitePoint Wizard bronze trophy
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    If he had the domain name before the trademark existed, I can't see how he should be obliged to give it up for free, especially if the site itse;f isn't trying to purposely exploit the trademark - but if he's up for selling, pay the money, it's not exactly extortionate, and no doubt up for some negotiation.

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    SitePoint Addict soccerfriend's Avatar
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    the person who got the domain has all the rights to do anything he wants with that domain..

    lets say some domain gets a really high traffic just becouse of the combination of words that the domains is combined from.. it might be cheaper for me to go and get trademark rather than develop and market other domain
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    Word Painter silver trophy Shyflower's Avatar
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    The answer is no. You'll find the facts in the ICANN guidelines
    Linda Jenkinson
    "Say what you mean. Mean what you say. But don't say it mean." ~Unknown

  10. #10
    Non-Member Gator99's Avatar
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    $900 won't get you much "lawyering", maybe your client should make a counter offer.

  11. #11
    SitePoint Wizard TheRedDevil's Avatar
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    As others have mentioned the price offered is not "too high".

    Considering what the costs would be if you go the legal way, with lawyers etc. and it is not even certain the court would rule in favor of your client.

    Personally I would try to make a counter offer, but in any case your client most probably will be better off just buying the domain.

  12. #12
    SitePoint Evangelist Unit7285's Avatar
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    This is another useful page that directly addresses your client's situation:

    'WIPO Overview of WIPO Panel Views on Selected UDRP Questions'

    http://arbiter.wipo.int/domains/sear...iew/index.html

    (UDRP = Uniform Domain Name Dispute Resolution Policy and Rules)


    Paul

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    Pay the $900

    A competent trademark lawyer at the partner level will cost, in a big city market, $300 or more per hour. Even a threat letter will burn up pretty close to the $900.

    Of course, you could hire someone who knows diddly about trademark law and get a lower rate. Even then, it's not going to be a lot cheaper than $900, even if the other side rolls over and gives up on the domain. The risk there is that they screw it up so bad that the judgment comes down that your client isn't entitled to the domain and shouldn't have gotten the trademark in the first place.

    If they have a lick of sense and are serious about the business, your clients will understand that $900 is little enough to pay to put this to rest.

    On the other hand, if they have no common sense and see $900 as a large sum of money, or, worse, want to get nasty because they see some principle involved since they feel they own everything remotely related to the trademark, you might want to dump this client. Folks like that usually end up being trouble in the end.

    Disclaimers - I'm not your lawyer, and not your client's lawyer, and there is no legal relationship here. If they want a lawyer of their own, they need to go hire one of their own.

  14. #14
    SitePoint Guru El Camino's Avatar
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    Quote Originally Posted by clearweb
    I have a customer that recently trademarked their business name with the U.S. Patents and Trademarks Office. Come to find out, somebody has already purchased a domain name with their trademarked business name.
    Getting a trademark can take year(s). If I was going to trademark a name the first thing I would do is make sure the domain name was available and register it.
    Also note that it is possible for multiple persons to have the same trademark if they are in different lines of business. Is the website in the same business?

  15. #15
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    I'm no lawyer but I did sit on a jury for something like this...
    From what I remember, Ted S could very well be right. Your client would have no right to the domain that was registered before the Trademark. Also, you might want to check if the Trademark would become invalid because someone else was using the name publicly before the Trademark. $900 may be a bargain rather than opening this can of worms. Again, this is all definitely stuff for the attorneys.


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