Web Hosting Talk : Web Hosting Main Forums : Domain Names : Trademark, Again

[wmac]

Hello

I want to know if someone register a trade mark with the name of my website's domain name (after I registered domain name) what will happen.

Is he able to ask for the domain even though he has registered his trademark after I have stated a business with that name?

If this is true then no one can risk on doing business with a domain name before registering a trademark or company with the same name.

Any comment is appreciated.

Mac

[Chicken]

This can be sticky. A domain name isn't necessarily the same as the trademarked word or phrase (unless of course, it is). You may be able to trademark name.com and have *that* be your name. Really all of this is better given to a lawyer who specializes in this sort of thing.

[wmac]

Originally posted by Chicken
Really all of this is better given to a lawyer who specializes in this sort of thing.

Chicken,

The reason for asking this in domain name forums is that people may have the same experience and may be able to tell their experience.

Otherwise what is this forum for ? Are we going to speak about how to set name servers on domain name ?

There are many people here that have experience with both trademarks and court etc. Even I guess there are lawyers here.

So why we are trying to close such discussions.

Regards,
Mac

[SoftWareRevue]

Originally posted by sarmadys
. . . . . .So why we are trying to close such discussions. . . . .

I think Chicken only meant that "Really all of this is better given to a lawyer who specializes in this sort of thing."

Which is giving you advise to contact a lawyer if you want an accurate answer to this extremely complicated situation.

He left the thread open so you can choose to accept any information you receive in it.

[OMC]

As Chicken said... sticky issue. Having been in a couple of TM skirmishes I can share this..... =Usually= a variation of a TM name is protected. Blatant misuse would be- coke.com as a TM. Direct infringment of their mark.

Another determining factor is length of use. If you have run a name as a SM for 10 years and can prove it and XYZ applies for a TM using the exact name you can contest it and prolly win.

Best advice is as Chicken said---- have legal review. I own a domain now that is question. I have used it for 5 years and SM the name and logo, but I don't have a TM. Application of TM is being contested by another business since their TM contains the same distinct suffix. Best legal counsel says to sell my domain to them for a nominal fee (ie less than what it will cost them to continue protest) and move on cuz I will most likely lose.

[Jason Ellis]

There are a lot of things that go into trademarks and trademark infringement, and it's impossible to say, based on the limited amount of information you provided here, whether the new trademark owner could convince the relevant authorities to take your domain name away from you.

I second the recommendation that you talk to a lawyer who specializes in trademark law. But, unlike the other posts, I am happy to provide a recommendation on who that should be.

Contact Leslie F. Black at www.trademarkpower.com. Les knows trademarks inside and out, and is also an expert on Internet and domain name law. He can help you.

Good luck,

Jason

[Gurudev]

Sarmadys,

In another forum, you are selling your domain (the one that is being disputed/in question) and requesting for offers. Hmm..... what exactly is the issue here?

[SoftWareRevue]

Originally posted by Gurudev
Sarmadys,

In another forum, you are selling your domain (the one that is being disputed/in question) and requesting for offers. Hmm..... what exactly is the issue here?

I'm sure it isn't the name you're referring to. And it doesn't help with his question.

[Gurudev]

I'm sure it isn't the name you're referring to. And it doesn't help with his question.

Oh? How are you sure or how sure are you? I answered his question already (yesterday) with regards to this name in another thread here on WHT http://www.webhostingtalk.com/showth...threadid=29594

Now, I saw in another forum (different site) he is wanting to sell that same name. Unless he has trademark issues with more names, in which case he is probably doing all of this knowingly (squatting, might I say?).

[wmac]

Originally posted by Gurudev
Now, I saw in another forum (different site) he is wanting to sell that same name.

Hello Gurudev

In fact if it was about the same domain I would post it in the same thread. I must say that if I think I will not be able to hold that domain be sure hat I will sell it to someone that has the money, time and effort to hold and use it.

But this one is about another domain. I want to be sure that trademark matter will not repeat. Specially on my main domain names. From comments that I saw here I think I would rather register a trademark for them before anyone else does it. I may also register an LLC on them. (I have heared that someone is investigating the case). You see nchost matter has warned me of the same attempts.

And would you please describe what you mean by this :

in which case he is probably doing all of this knowingly (squatting, might I say?).

Thank you
Mac

[Gurudev]

Squatting can be defined in different ways and if you ask people they will give you different opinions. In my opinion, if you have a registered domain name and using it properly for your own site then it is fine. However, if you are registering a domain for the purpose of selling it and knowingly that someone else is using a version of the domain for the same purpose then that is definitely squatting (technically speaking though not legally speaking). This may or may not be a trademarked domain name and basically depends upon your intent and how you are using it.

Trademarks become trademarks based on the duration for how long they have been registered and have been in use and also on the basis of thier brand/name recognition. In otherwords, if you haven't used a trademark or if it is not very well recognized then there is no trademark case (usually). So, there are two different issues and registration alone does not mean much. With regards to an LLC, it is just a business entity and has nothing to do with a trademark.

You can register your name trademark - just go to your regional public library and you can get an application and file it with the copyright office or you can mail them and they will send you an application. You can get more information at http://www.loc.gov and http://www.uspto.gov

By the way, just by registering a trademark you are not fully covered and if someone has time and money they can sue you anyway. In the end it usually comes down to, who has the most money, time and resources to fight it out.

Like I have said before, if you are serious get a lawyer. Also, there are not a lot of lawyers who are well versed with these issues with regrads to the Internet as this is all still very new and decisions are made in the court of law. That is why most of the big companies just start threatening you to see if you hand it to them. There are not many precedents with regards to these type of cases and especially one that involves just a domain name. It's all a game.

[wmac]

Gurudev

Thank you for your complete information. No, I have never registered a domain for the purpose of selling.

Even If you look at the domains that once I offered for sale, you will see that I have launched a website on all of them except that domain.

I had registered them but I thought I may not have enough time to use them but finally we designed websites for all of them and they are all functional now.

Again thank you for the information you provided.

Mac

[Chicken]

Originally posted by sarmadys
So why we are trying to close such discussions.

As others said, my suggestion wasn't to shut the thread down, I just thought that the best advice you could get was from someone who knew more about these things. You are (of course) free to ask about it here and see if other members have run into a similar situation!