If the domain this person has registered has any of the following extensions, .biz, .com, .info, .name, .net, or .org, then it is essential that you read up on the ICANN UDRP (Uniform Domain Name Dispute Resolution Policy) @ http://www.icann.org/udrp/udrp-policy-24oct99.htm. This policy has basically been adopted by all registrars to deal with such problems relating to domain name trademark/intellectual property rights infringments etc. If this person has registered your trademark as a domain name then he/she will most probably be infringing the ICANN rules. I would personally get intouch with the registrar of which the disputed domain name is registered under.
With regard to the cost of a cease and desist letter, I really don’t know what the cost of one of those is, but if you’re serious about protecting your trademark and you feel that it could harm your market, then $300 would be worth it I guess. However, I think contacting the registrar with a formal letter/e-mail would be more appropriate since they are the people who should be adhering to the UDRP policy. If you were to pay out for a C&D and the person still refuses to give up his domain name, then you’ll be forking out more to take further action against him.
And as mentioned above, the fact that he’s offered to sell the domain name to you is even more of a reason to pursue it. It’s clear by this that he really has no legitimate interest in the domain name.
Thanks.
I stupidly said I would be happy to purchase the domain name for the price they paid for it. I hope they can’t use it against me. I was only trying to be nice.
Like I said, the product and website is still under construction.
I will read that link.
Thanks
I called ICANN, and the suggested I go to www.arbforums.com. I called this establishment and they gave me this link: http://www.arb-forum.com/domains/UDRP/index.asp
I can pay $1500 to have them dispute the domain name case. It gets decided upon by a forum. Interesting.
I’m not sure which route to take.
This is the route that companies such as Disney take, and took against a friend of mine (which I explained earlier in this thread - I infact held the domain name which was disputed by Disney under my registrar account so I have basic knowledge of how this works). The forum decide who has the rights to the domain name, if you win the case the forum notify the registrar of which the domain name is registered under and it will be automatically transferred to you. The current owner will not get a penny (obviously, providing you win). Apparently arb-forum.com is favoured by companies in this kind of dispute as it is rumoured they are little biased, and in the majority of cases the dispute is won by the complainant (which would be you in this case).
I guess the best step to take now is to threaten the current owner that you will take legal action in accordance with the ICANN UDRP policy if he does not let go of the domain name in question. Maybe you could appoint a lawyer or do this yourself… send the person a formal e-mail and/or letter outlining the action you will take should he not comply with your demands. I wouldn’t be such a nice guy about it… it’s highly unlikely he would just give in to a polite e-mail asking for the name to be transferred (as has already shown). Be assertive and show this guy that you know what you’re talking about!
It’s probably best to first write a note to the company that uses your trademark, conflicting them with it on a typed letter with your authograph, you do this beceause when the compay does not respond you have enough evidence to convnice the judge in court
You constatated the problem
You wrote a decent letter without directly persuing the company
The company did NOT respond to the letter and took no actions at all
You don’t need to spend “millions and millions” to protect your trademark or to dispute a domain name. Yes, Disney will spend more on lawyers etc, but they go through exactly the same process anyone would have to, in order to dispute a domain name. Besides, lawsuits and court hearings are irrelevant as the dispute process is a little different. Neither of the parties involved are required to attend and it does not involve testimony being given (so you don’t necessarily need to pay out for a lawyer to represent you and you won’t be going to court). The hearing and the decision is made by a panel, which is usually one or two persons.
If you go through the system then you should be fine. These dispute systems are almost always biased on the trademark owner’s side these days, even with the really dodgy cases like where Apple took itunes.co.uk off a company (even though the company registered the domain years before the whole itunes thing came about). There’s plenty other examples.
Was the point l was about to make. Plenty of people simply copy material from other sites without being aware they are infringing on copyright and intellectual property rights.
I would drop an email on the person, see what the response is to that, and then in the worse case go with your legal option. Get your lawyer to also mention his site can be taken down for using illegal material (simply contact the hosting company, most of those guys will act very quickly if they are US companies, in the past we have had sites taken down for using our material … very effective method of getting a result).
Like has been said before in the thread, you have to enforce your trademark or you may find your rights to the trademark unefrocable in a court of law.
Your first mistake was to nicely contact these people. To heck with nicities, this is your trademark, first off you should have sent them a cease and decist letter, there are drafts of these all around the internet.
Since I registered my trademark I have sent out 14 C&D letters (first copy by email, if no response second copy certified US mail) and have only had to contact my attorney once in those 14 cases.
If the other person was clueless and “just didnt know” then tough, this is business and they had better do thier homework about business just like the rest of us “old timers”, why should us experienced business owners have to pat these newcomers on the head and say it is okay to screw up when nobody was patting us on the head when we started…?
Now since they offered to sell you that domain, they screwed themselves right out of any money from you, AND out of the domain itself simply because what they just did can (and will be) looked at as 1) cybersquatting 2) no real intent on using the mark in commerce.
Where was the domain that they have registered at?
Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
Notice the phrase “legitimate use”. Also keep in mind whether or not someone else owned the domain name before you.
I have interests in trademarks as well, for a website for my endeavor. I own an excellent domain name. I own the singular and plural of it (.com). Also, I own the singular of another domain name, but the plural is being used by someone else. I wonder if I can get away with the singular? Probably not?
Trademarks go way, way to far in many cases. Donald Trump, for example, trademarked the phrase “You’re Fired”. Trump did not invent that phrase. It’s a generic phrase that has been used for decades. I think it was complete BS that he was allowed a trademark on it. Trademarking of generic phrases and the patenting of generic, broad concepts with no prototypes does nothing but hinder advancement.
Other interesting info:
Trademark Source Identifier / Source Significance
A trademark MUST HAVE “Source-Indicating Significance.” Thus, the mark must be “perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a web site.” See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).
Therefore, where a domain name merely serves to identify the location on the Internet where your web site appears, and does not separately identify your products or services, the domain name will not be registered as a trademark.
I wish you people would tell us what your domain names are so we can see what type of case it is.
Me, for example, I own an excellent .com domain name. Someone else has the .net, doesn’t work in the networking industry, but works in my industry, and I’m afraid that if I use my .com that they’ll come after me.
This is all very, very silly to me. They come out with new TLDs from time to time and it is very expensive to have to register them all.
And let’s face it, it is harder and harder to come up with a good domain name. They’re all taken!!!
I’m sorry, but if some idiot confuses tots.com with tots.net it is their own problem. Like going to the wrong house because you messed up S 3rd St. with N 3rd St.
I see a link to e-creations.com in your sig line. Let me ask you something. Should the people who own creations.com name come after you because you are infringing on their “creations” domain name?
I’m not sure what side of the issue you stand on in this sort of case. Just wondering!!!
Also, it seems silly to me that someone who owns sex.com automatically has rights to sex.org or sex.net.
I’m tired. Rambling, incoherent, you get the idea.
Well, Microsoft went after mocosoft.com! And lost!!! Hahahahaha. Mocosoft–who would confuse that with Microsoft? Microsoft is a bunch of bullies. I only wish the last big Windows viruses did malicious things like destroy data. MSBlaster didn’t do much in that area.
I know what you are saying, but, “creations” is too generic for the USPTO to allow a registration. e-creations® is my trademark, e-creations.com is my domain, my domain has my trademark in it. Someone who owns creations.com just owns the domain name, two totally different animals, unless they held the trademark for “creations” and was in the same field as I was.
If anyone registers e-creations.* and tries to compete with me, I’d enforce my trademark rights when that time came. I’ve had to do it twice with domains and 14 times total.
But I’m not a trademark and patent lawyer, so don’t take anything I say as gospel. I have registered my own trademarks and patents myself, but I’m no pro
In this case someone has actually regsirered sex.xxx as a trademark.
I don’t know if that would give someone automatic rights to the domain name - maybe of they were not in in the USA? We are going to get a sudden rush to the USPTO to trademark xxx doains befor ethey are available?
I see a link to e-creations.com in your sig line. Let me ask you something. Should the people who own creations.com name come after you because you are infringing on their “creations” domain name?
In my town there is a bar called “The Office”. There is also an office staffing agency called, surprise surprise, "The Office. The agency has been around since the 50’s. The bar since the 90’s. Seems like if the agency wanted the bar to change the name they should be able to. However the agency had filed to do this but, OOP’s, forgot to get a trademark. The bar did get a trademark and “lets” the agency keep its name because it is a piece of the town history.
I am about to launch a new site but before I do you bet your bottom dollar I will trademark and protect that trademark no matter what.
Send the email. Hope for the best. If push comes to shove then lay the smack down. You own it for a reason.
Who knows, this person may not even know about your trademark, thinking that his design is original, spending tons of cash on business cards and letter head only to find out later that he is unknowingly using your property.
You could be doing him a favor in emailing him (or her).
I actually read the whole thread and it got me thinking. Just went looking around on the Canadian government’s trademarking site and it specifically says that any trademark created in Canada is only effective in Canada. Wouldn’t this be the case in any country?
It may apply in your case if whoever is infringing on your TM is outside your country.
