Valuate Domain Names
DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars
HomeRegisterMembershipsGetting StartedDomain Tools Domain EbooksSEO Software Domain Resellers Advertise

Go Back   DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars > Domain News, Beginners Guides and Legal Stuff! > Domain Name Legal Issues
Register Search Today's Posts Mark Forums Read

Reply
 
LinkBack Thread Tools Display Modes
Old 01-05-2009, 09:06 PM   #1 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


Domain becomes trademark

I have a friend that registered a domain. A company was merged and now the name is the exact company name and he has been contacted about giving up the name. The name itself can easily be used as a name for a company that he already owns.

What exactly can my friend do in this situation? Is the new company entitled to own the domain? Would it be prudent to get a website set up on the domain as soon as possible?
stueynet is offline   Reply With Quote
Sponsored Ads
Old 01-05-2009, 09:37 PM   #2 (permalink)
Platinum Lifetime Member
No Avatar
 
Last Online: 10-27-2009 04:48 PM
iTrader: (7)
Join Date: Aug 2008
Posts: 333
DNF$: 80
Country:


If he owned the domain before they became a company i don't think he should have any trouble keeping the name. If they do somehow get it back and that is the case, our legal system is screwed up.
__________________
...
Yusio is offline   Reply With Quote
Old 01-05-2009, 10:09 PM   #3 (permalink)
Platinum Lifetime Member
 
iBizStart's Avatar
 
Last Online: Today 10:26 AM
iTrader: (25)
Join Date: Feb 2003
Posts: 1,780
DNF$: 174
Location: New Jersey


Also depends what he was using the domain for before/now. But once again the best thing for him to do is to consult with an attorney. For all you know, a judge could view the "building a site real quick on the domain" as a bad faith attempt to keep a domain which is trademarked.
__________________
Legal Help Forum
iBizStart is offline   Reply With Quote
Old 01-05-2009, 11:08 PM   #4 (permalink)
I love Domains!!
 
QueenMother's Avatar
 
Last Online: Yesterday 11:18 PM
iTrader: (2)
Join Date: Apr 2008
Posts: 238
DNF$: 4,270
Location: Canada&W. Palm
Country:


My advice is this.
1. put up a mini website. ideally no google ad words.
2. Contact a tm lawyer( I have an excellent one).

They will either go away or make a deal...in your favour of course
__________________
________________________________________
QueenMother is offline   Reply With Quote
Old 01-05-2009, 11:58 PM   #5 (permalink)
Platinum Lifetime Member
 
lordbyroniv's Avatar
 
Name: John Sanders
Last Online: 06-15-2009 09:05 PM
iTrader: (2)
Join Date: May 2007
Posts: 1,062
DNF$: 1
Location: San Francisco


Quote:
Originally Posted by stueynet View Post
I have a friend that registered a domain. A company was merged and now the name is the exact company name and he has been contacted about giving up the name. The name itself can easily be used as a name for a company that he already owns.

What exactly can my friend do in this situation? Is the new company entitled to own the domain? Would it be prudent to get a website set up on the domain as soon as possible?

A friend

Thats the oldest line in the book
lordbyroniv is offline   Reply With Quote
Old 01-06-2009, 10:56 AM   #6 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


Quote:
Originally Posted by lordbyroniv View Post
A friend

Thats the oldest line in the book
lol. Actually it really is a friend. I wish it was me (assuming he can get paid off).

Guys thanks for the advice!
stueynet is offline   Reply With Quote
Old 01-06-2009, 11:02 AM   #7 (permalink)
The Evil Mod
 
draggar's Avatar
 
Name: Ed
Last Online: Today 10:53 AM
iTrader: (36)
Join Date: Dec 2007
Posts: 8,122
DNF$: 141
Location: South Florida
Country:


Quote:
Originally Posted by Yusio View Post
If he owned the domain before they became a company i don't think he should have any trouble keeping the name. If they do somehow get it back and that is the case, our legal system is screwed up.
Tell that to the owners of MySpace.co.uk .

I'll agree, though, put up a site with no ads, if your company is not related to the company that merged then you might be safer. (And contact a TM attorney)

Your situation is what makes up many reverse-hijacking cases, too.

Good luck.
draggar is online now   Reply With Quote
Old 01-06-2009, 11:46 AM   #8 (permalink)
Missing in action
 
sdsinc's Avatar
 
Name: Kate
Last Online: Today 11:36 AM
iTrader: (41)
Join Date: Jul 2005
Posts: 4,623
DNF$: 27,475
Location: front line
Country:


Quote:
Originally Posted by draggar View Post
Tell that to the owners of MySpace.co.uk .
They should have sticked to their original purpose.
Quote:
However, the ruling, made by independent expert Antony Gold, found that while myspace.co.uk had initially been used to offer email services and mini-websites to subscribers it had changed its model to exploit MySpace's popularity.

TWS started to use the myspace.co.uk address to lead to a "parked" web page with advertisements for social networking websites including MySpace.

The arbitrator decided that this was evidence of abusive registration, that TWS was profiting unfairly from the association with MySpace.
http://www.guardian.co.uk/media/2008...e.digitalmedia

Likewise, don't do anything silly with the domain, and you'll be fine.
sdsinc is online now   Reply With Quote
Old 01-06-2009, 12:38 PM   #9 (permalink)
DNF Addict
No Avatar
 
Last Online: 11-04-2009 01:38 PM
iTrader: (115)
Join Date: Nov 2003
Posts: 1,690
DNF$: 5,360
Location: New Jersey
Country:


I think you should post on a bulletin board and ask people you don't know for advice. Then, just to make things interesting, don't tell them the domain name, the trademark, or the country you are in so nobody can really give a specific answer. Then just sit back and everything will be solved for you.
__________________
Trademarks.org - trademark information
Keyword Factory is offline   Reply With Quote
Old 01-06-2009, 12:43 PM   #10 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


Quote:
Originally Posted by Keyword Factory View Post
I think you should post on a bulletin board and ask people you don't know for advice. Then, just to make things interesting, don't tell them the domain name, the trademark, or the country you are in so nobody can really give a specific answer. Then just sit back and everything will be solved for you.
Sarcasm. There's nothing like it. Tell me how you really feel!
stueynet is offline   Reply With Quote
Old 01-06-2009, 07:06 PM   #11 (permalink)
Platinum Lifetime Member
No Avatar
 
Name: Marc J. Randazza
Last Online: Today 10:49 AM
iTrader: (0)
Join Date: Aug 2008
Posts: 252
DNF$: 10
Location: San Diego


It might be sarcastic, but there is a kernel of wisdom in it.

Absent more information, there is no way to have a truly intelligent discussion about this.

Example: If you just owned a domain that "happened" to become a trademark, like you owned www.jetred.com and in a year, a new airline called Jet Red launched, you wouldn't likely have bad faith registration. Of course, the myspace.co.uk example above is a good cautionary tale for how a previously innocent registration can mature into an infringement if you don't act properly.

On the other hand, if you registered deltanorthwest.com two years ago for some inexplicable reason, and now that they announced that Delta and Northwest are going to merge, you wouldn't necessarily be considered to be an innocent victim of circumstance. I suppose if you had an innocent explanation for that, you would.

But as the joker above has pointed out, without more, this is going to be nothing more than a jumble of possibly - applicable hypotheticals.
__________________
Marc J. Randazza
Attorney at Law
Blog: The Legal Satyricon
marcorandazza is online now   Reply With Quote
Old 01-06-2009, 07:49 PM   #12 (permalink)
Platinum Lifetime Member
 
flybuzz's Avatar
 
Last Online: Yesterday 11:02 PM
iTrader: (8)
Join Date: May 2006
Posts: 621
DNF$: 565
Location: usa


well depending on who your opponent is and how much money your friend has to defend the name. If the oponent is way too big or your friend doesn't even have money for lawyer then your friend will most likely lose the name sooner or later.
flybuzz is offline   Reply With Quote
Old 01-06-2009, 07:52 PM   #13 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


Well said. I believe in this case your second example is almost perfectly analagous to the situation.

Quote:
Originally Posted by marcorandazza View Post
It might be sarcastic, but there is a kernel of wisdom in it.

Absent more information, there is no way to have a truly intelligent discussion about this.

Example: If you just owned a domain that "happened" to become a trademark, like you owned www.jetred.com and in a year, a new airline called Jet Red launched, you wouldn't likely have bad faith registration. Of course, the myspace.co.uk example above is a good cautionary tale for how a previously innocent registration can mature into an infringement if you don't act properly.

On the other hand, if you registered deltanorthwest.com two years ago for some inexplicable reason, and now that they announced that Delta and Northwest are going to merge, you wouldn't necessarily be considered to be an innocent victim of circumstance. I suppose if you had an innocent explanation for that, you would.

But as the joker above has pointed out, without more, this is going to be nothing more than a jumble of possibly - applicable hypotheticals.
stueynet is offline   Reply With Quote
Old 01-06-2009, 07:53 PM   #14 (permalink)
I love Domains!!
 
QueenMother's Avatar
 
Last Online: Yesterday 11:18 PM
iTrader: (2)
Join Date: Apr 2008
Posts: 238
DNF$: 4,270
Location: Canada&W. Palm
Country:


Is the domain a dot ca or dot com?
__________________
________________________________________
QueenMother is offline   Reply With Quote
Old 01-07-2009, 09:41 AM   #15 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


.com
stueynet is offline   Reply With Quote
Old 01-07-2009, 11:50 AM   #16 (permalink)
DNF Regular
No Avatar
 
Name: Steven McDonald
Last Online: Today 10:43 AM
iTrader: (26)
Join Date: Oct 2005
Posts: 578
DNF$: 1,595
Location: Connecticut
Country:


Pm sent

Thanks,
Steve
karter9977 is online now   Reply With Quote
Old 01-07-2009, 01:00 PM   #17 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


Ok here is a perfect example to illustrate the situation.

You buy the name domain sharpsony.com

Then Sharp and Sony merge and want the domain. They even go so far as to get the privacy registration removed. Sharp is a generic english word and sony is a trademarked brand.

This also leads to a discussion about how quickly they were able to get the private registration removed. So much so that within 1 day of my friend receiving the email notifying him that they would be canceling his private registration, his personal info was available via whois records.
stueynet is offline   Reply With Quote
Old 01-07-2009, 01:03 PM   #18 (permalink)
Platinum Lifetime Member
 
theinvestor's Avatar
 
Last Online: Today 11:30 AM
iTrader: (34)
Join Date: Nov 2007
Posts: 3,268
DNF$: 0
Location: Toronto, Canada
Country:


Don't bother getting a lawyer. Sony is trademarked just because you combined it with another word doesn't negate the fact you bought a domain with a trademark.
theinvestor is online now   Reply With Quote
Old 01-07-2009, 01:09 PM   #19 (permalink)
DNF Regular
 
stueynet's Avatar
 
Name: Stu
Last Online: 10-22-2009 12:54 PM
iTrader: (25)
Join Date: Feb 2004
Posts: 735
DNF$: 5,014
Location: Toronto


Quote:
Originally Posted by theinvestor View Post
Don't bother getting a lawyer. Sony is trademarked just because you combined it with another word doesn't negate the fact you bought a domain with a trademark.
Like I said it wasn't be but a friend of mine who is not in the domain business. How would this relate to sites like PaypalSucks.com and other domains/sites with company names in the domain?

Another example would be iphoneincanada.com or nintendofanboy.com. In these situations, is it just a matter of the trademark holder deciding to take action or not?
stueynet is offline   Reply With Quote
Old 01-07-2009, 01:12 PM   #20 (permalink)
Platinum Lifetime Member
 
theinvestor's Avatar
 
Last Online: Today 11:30 AM
iTrader: (34)
Join Date: Nov 2007
Posts: 3,268
DNF$: 0
Location: Toronto, Canada
Country:


Exactly. BTW i didn't intend to mean that the person with the trademark was you. It really doesn't matter whether it's you or a friend.

But do you really think companies with a trademark go after each website that infringes against their mark? I can assure you when you step on one of their products they will come after you.

If i register pepsizero.com i can assure you that if pepsi were to create a product pepsizero in the future they have rights to that name.
theinvestor is online now   Reply With Quote
Reply


Currently Active Users Viewing This Thread: 1 (0 members and 1 guests)
 
Thread Tools
Display Modes

Posting Rules
You may not post new threads
You may not post replies
You may not post attachments
You may not edit your posts

BB code is On
Smilies are On
[IMG] code is Off
HTML code is Off
Trackbacks are On
Pingbacks are On
Refbacks are On



All times are GMT -5. The time now is 11:38 AM.
Copyright @2001-2009 DNForum.com