Co. trademarked my name after I turned down offer - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**reed** · 11-13-2002, 11:34 AM

Quick facts:

I registered zride.com Jan 9, 2002

They registered zride.net on July 17, 2002

They sent me an offer for the name as well as filed to trademark "Z RIDE" on July 29, 2002

I turned down the offer of $150 and countered with $3500 which was turned down.

The offered $200 today and also stated they "have a federal trademark for the work Z RIDE"

So my question is, how does the trademark affect my ownership of zride.com since I registered the name 7 months before they filed for trademark?

Thanks for any info!

**HOWARD** · 11-13-2002, 12:20 PM

You win!! They cannot prove that you registered the domain in bad faith. If anything - you could bring an action against them for trading on your good name - even though it hasn't been trademarked.

**reed** · 11-13-2002, 12:35 PM

One other thing to note, I hold the zride.com name and have it parked currently with development underway but no site up yet. Would this make a difference?

DomainPairs · 11-13-2002, 04:30 PM

Can't you ask them to stop using the net domain.

**pljones** · 11-13-2002, 04:59 PM

A decision was recently issued on this very issue. Take a look at Picoliter.com, http://www.arbforum.com/domains/decisions/122205.htm

This decision should be right on point with your facts. FYI- the panel found reverse domain name hijacking in the case as well.

**adoptabledomains** · 11-13-2002, 11:08 PM

Look at their trademark at uspto.gov and see what catetory it's registered in. You should have a right to use the domain, but probably not in the category in which they hold the trademark. It looks like their trademark is in the sports/bicycle category. If that was your intent, they probably Trumped you with the trademark. However, if you sell auto shocks or horse saddles, you may be okay.

Your site will likely get accidental hits from theirs, being the superior dot-com. It could be really ebmarassing for them if your site led to porn, gambling, or something else they didn't want their customers to see, but did not infringe on their legal trademark. How about the "Zride condom"...maybe the Zride vibrator?

I'll bet that would motivate to purchase closer to the price of a WIPO/UDRP filing.

(See whitehouse.gov vs. whitehouse.com)

Worse than a true cybersquatter (not speculator) is a reverse hijacker.

Good Luck.

**Fearless** · 11-13-2002, 11:11 PM

Now you can say you consulted with several attorneys.

You're a big shot now.

Drewbert · 11-13-2002, 11:43 PM

>Can't you ask them to stop using the net domain.

Cough, hack, I'm sorry?

Are you saying we should dismantle the multiple-TLD system because the owner of the dotCom has rights to all other TLD's?

Up here for thinking!

**Fearless** · 11-14-2002, 12:05 AM

I had a company try get a TM for my exact domain name, Yada.com, after I turned down their offer. They ended up buying yadayada.com and blew through a bunch of VC before fizzing out.

**reed** · 11-14-2002, 12:08 AM

Wanted to say a big THANKS for all the info and comments so far, I do appreciate the help.

**fizz** · 11-14-2002, 12:50 AM

Quote:

Originally posted by gregr
...and blew through a bunch of VC before fizzing out.

Ouch! Careful how you use that word please gregr

Very informative thread BTW - thanks guys.

**Duke** · 11-14-2002, 07:12 AM

Quote:

Originally posted by gregr
I had a company try get a TM for my exact domain name, Yada.com, after I turned down their offer. They ended up buying yadayada.com and blew through a bunch of VC before fizzing out.

Great Lack of Success story! Justice sometimes prevails

DomainPairs · 11-18-2002, 05:09 PM

If you can manufacture a vibrator that plugs into the usb port and call it the Z ride. I'd like to sign up for your affiliate program please.

**jberryhill** · 11-18-2002, 08:36 PM

"Now you can say you consulted with several attorneys. "

One of the things that most ethics codes encourage attorneys to do is to promote public education about the law. While things like this forum, radio call-in shows, etc. are one way that attorneys can fulfill this objective, you should not mistake such public discussions for legal consultation, and most certainly should not claim that you have had such consultation.

While specific questions provide a useful jumping-off point for explaining relevant principles it is unwise to consider such a public discussion as legal advice. If I were an attorney for the other side reading this forum, and if you obtained specific advice in this forum and then engaged that attorney for further work on the matter, I would certainly claim that you had waived your privilege and could very well be successful in obtaining other correspondence you held with that attorney in that matter.

On the attorney end of things, there are also malpractice issues which bear on giving specific advice in public fora. Assuming an attorney-client relationship gives rise to specific duties... 'nuff said.

Once again, with feeling, what is often missing from what seems to be the "no-brainer" scenario of a registration application filed after your domain registration is whether there are any facts that might suggest the registrant had reason to be aware of a perfectly enforcible common-law claim that pre-dated the application. In the present example, and since I'm too lazy to look it up right now, the registrant does not state whether the application is an intent-to-use application or a use-based application.

It may very well be an "easy case", but disputes such as eresolution.com and efads.com were lost by the domain registrant on similar facts. And whether one considers paying hundreds of dollars for a three-member panel in order to obtain a "no-brainer" decision is a "win", is something of a subjective judgment. Unlike the picoliter.com case, which involved a generic designation for a unit of volumetric measure, a Panel may want to know why you registered the domain name, if as noted above, there might be some suggestion that you had reason to know of a pre-existing common law mark. Maybe there are, maybe there aren't, but if it matters to you then you should consider consulting an attorney.

**jberryhill** · 11-22-2002, 10:28 AM

You might like this line from a UDRP opinion which was posted at the WIPO site today:

"Furthermore, Complainant's waiting to file this Complaint until after it had obtained a United States service mark registration a few months ago (though it claims to have used the name "Windsor" since 1939), with full knowledge that Respondent had registered the disputed domain name in 1995, some seven years earlier, smacks of deception and an attempt to manipulate the Policy. "

Decision at:

http://arbiter.wipo.int/domains/deci...2002-0839.html

**reed** · 11-22-2002, 11:08 AM

Great info, thanks for the link!