Trademark Issue

[devbite]

I have recently purchased an name (lets call it xxxx.com) through a domain name backorder site. I just been contacted by the owner of the .NET version, looking to buy the name. I am planning on developing the name for a future project. But as I don't have the time to develp the site at the moment, I told him that I may consider selling the name for the right price.

He emailed me back saying that he had a trademark pending, and there may be copyright issues if I developed the name.

Does anyone know how I stand on this issue. Does it make a difference, as I am in the UK and his company is in the USA in regards to trademarks?

Or does it sound like he is playing the trademark card, to get the domain?

Any advice would be appreciated.

 

[pwfletcher]

Namesfly:

I am a TM attorney and presecute/defend such cases for a living. Unfortunately, it is a gray are and truly depends upon the specifics of your case (ie - the TM and the actual domain name).

Give me a little more info and I'll give you better advice. However, there are certain steps that you can take that will almost ensure that an action under ICANN's UDRP will fail.

My regular billing rates are $400/hour, but if you send me an email with the specifics, I'll give you a better answer for free ... you can't beat that price

Sincerely,

Patrick W. Fletcher, Esq.
Fletcher Law Offices
2600 Michelson Drive
17th Floor
Irvine, CA 92612
(949) 723-0111
(949) 723-0182 Fax

http://www.internetdisputes.org
http://www.copyrightsolutions.org
http://www.trademarksolutions.org

 

[pelican]

if he develops the site with the trademark domain for personal use, can the trademark owner get the domain back?

He does not intend to sell, just for personal use.

 

[Wanda]

You stated that the .net owner contacted you with intent to "buy"..
if that is correct..

then it appears they are willing to "buy"

will let the TM legal arm assist here..

keep us posted.
g/l

 

[DSL]

Simple solution: Sell it to them.

 

[pwfletcher]

Nine times out of ten, when an attorney makes you an offer to buy a trademarked domain name we are doing it to help establish the bad faith as required to recover a domain name under the UDRP. Depending upon how you say yes, you can basically be handing them the domain on a silver platter. Be careful!

 

[Elefekt]

Originally posted by pwfletcher
Namesfly:

I am a TM attorney and presecute/defend such cases for a living. Unfortunately, it is a gray are and truly depends upon the specifics of your case (ie - the TM and the actual domain name).

Give me a little more info and I'll give you better advice. However, there are certain steps that you can take that will almost ensure that an action under ICANN's UDRP will fail.

My regular billing rates are $400/hour, but if you send me an email with the specifics, I'll give you a better answer for free ... you can't beat that price

Sincerely,

Patrick W. Fletcher, Esq.
Fletcher Law Offices
2600 Michelson Drive
17th Floor
Irvine, CA 92612
(949) 723-0111
(949) 723-0182 Fax

http://www.internetdisputes.org
http://www.copyrightsolutions.org
http://www.trademarksolutions.org

Very cool. I may contact you in a little bit with a few questions as I am not a rich man would you be able to answer a few questions free?

 

[devbite]

Originally posted by pwfletcher
Namesfly:

I am a TM attorney and presecute/defend such cases for a living. Unfortunately, it is a gray are and truly depends upon the specifics of your case (ie - the TM and the actual domain name).

Give me a little more info and I'll give you better advice. However, there are certain steps that you can take that will almost ensure that an action under ICANN's UDRP will fail.

My regular billing rates are $400/hour, but if you send me an email with the specifics, I'll give you a better answer for free ... you can't beat that price

Sincerely,

Patrick W. Fletcher, Esq.
Fletcher Law Offices
2600 Michelson Drive
17th Floor
Irvine, CA 92612
(949) 723-0111
(949) 723-0182 Fax

http://www.internetdisputes.org
http://www.copyrightsolutions.org
http://www.trademarksolutions.org

Thats very kind, I've PMed you the details.

 

[Dave_Z]

Originally posted by pwfletcher
Namesfly:

I am a TM attorney and presecute/defend such cases for a living. Unfortunately, it is a gray are and truly depends upon the specifics of your case (ie - the TM and the actual domain name).

Give me a little more info and I'll give you better advice. However, there are certain steps that you can take that will almost ensure that an action under ICANN's UDRP will fail.

My regular billing rates are $400/hour, but if you send me an email with the specifics, I'll give you a better answer for free ... you can't beat that price

Sincerely,

Patrick W. Fletcher, Esq.
Fletcher Law Offices
2600 Michelson Drive
17th Floor
Irvine, CA 92612
(949) 723-0111
(949) 723-0182 Fax

http://www.internetdisputes.org
http://www.copyrightsolutions.org
http://www.trademarksolutions.org

Correct me if I'm wrong, but an exception to a trademark holder winning a domain name is if the domain name was registered BEFORE the trademark was, right?

 

[CenterPoint]

Originally posted by davezan
Correct me if I'm wrong, but an exception to a trademark holder winning a domain name is if the domain name was registered BEFORE the trademark was, right?

True, but in this case it sounds like the .net has been registered for a while. Personally, I would try and dig up the historicial whois data for the name and see when it was originally regged.

You also mention he has a TM "Pending" do a search and see if a Application for a TM has been filed. It could simply be a case of "they are thinking" of Registering the TM

Also is the domain "Common" or a dictionary phrase?
What areas does the TM cover?

Most important, if the name is of some value to you and you want to keep it. Get some legal advise. It is the best money you will spend.

Good Luck

 

[pwfletcher]

Davezan:

You are not necessarily correct. The UDRP does not require a registered trademark but only that trademark rights have been established. Trademark rights can be established simply by using the term in commerce (called a common law trademark). However, unless the mark is famous, it is more difficult to establish the "bad faith" element in such a case because the public is not preumed to have knowledge (constructive knowledge) of a common law trademark. Accordingly, the trademark holder must establish actual knowledge of the mark prior to registration of the domain name.

In addition, several cases, such as with Crew.com, have allowed a tm holder to recover a generic term. However, those decisions were just plain wrong and would never stand up in court.

 

[devbite]

Originally posted by CenterPoint
True, but in this case it sounds like the .net has been registered for a while. Personally, I would try and dig up the historicial whois data for the name and see when it was originally regged.

You also mention he has a TM "Pending" do a search and see if a Application for a TM has been filed. It could simply be a case of "they are thinking" of Registering the TM

Also is the domain "Common" or a dictionary phrase?
What areas does the TM cover?

Most important, if the name is of some value to you and you want to keep it. Get some legal advise. It is the best money you will spend.

Good Luck

The .NET version has only been registered for a few months and there doesn't seem to be anything on what the .COM version was used for before.

I've also tried to do a bit of research on the USPTO.gov website for info. on their trademark but there doesn't seem to be anything. I am only going by what he has told me, does a pending trademark make a difference?

The domain is potentially valuable to me, but obviously if there are trademark issues involved it could end up costing me, which I cannot afford.


pwfletcher:

Did you manage to take a look at the Private Message that I sent you? What do you think?

 

[jj2ii3344]

Please keep us informed about the result I am very eager to know!!

 

[Jeff]

:lightbulb:

I'd like to one day soon see a general "Legal Issues" Forum here on the Namepros site ... and perhaps member pwfletcher would be interested in potentially contributing to such an endeavor?
One caveat, of course, is that legal opinion/advice deals very much with the specifics of any one particular case, candid history of events or communications recieved and precisely what is occurring at the time of inquiry ... from my understanding.
Generally, however, broader issues (shared on the Forum) can be addressed for the benefit of the membership from some of the details provided by those who are inquiring, IMHO.
I'm sure other possible caveats, disclaimers, boundaries or parameters can be defined and discussed ... but while reading an extremely interesting and helpful thread here I figured I'd mention it to possibly "get the ball rolling".
Thanks, and PM en route to Mr. Fletcher as well.
-Jeff