Domain becomes trademark

**stueynet** · 01-05-2009, 09:06 PM

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?

**Yusio** · 01-05-2009, 09:37 PM

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.

**iBizStart** · 01-05-2009, 10:09 PM

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.

**Ilze** · 01-05-2009, 11:08 PM

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

**lordbyroniv** · 01-05-2009, 11:58 PM

Originally Posted by stueynet

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

**stueynet** · 01-06-2009, 10:56 AM

Originally Posted by lordbyroniv

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!

**draggar** · 01-06-2009, 11:02 AM

Originally Posted by Yusio

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.

**katherine** · 01-06-2009, 11:46 AM

Originally Posted by draggar

Tell that to the owners of MySpace.co.uk .

They should have sticked to their original purpose.

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.

**Keyword Factory** · 01-06-2009, 12:38 PM

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.

**stueynet** · 01-06-2009, 12:43 PM

Originally Posted by Keyword Factory

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!

**marcorandazza** · 01-06-2009, 07:06 PM

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.

**flybuzz** · 01-06-2009, 07:49 PM

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.

**stueynet** · 01-06-2009, 07:52 PM

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

Originally Posted by marcorandazza

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.

**Ilze** · 01-06-2009, 07:53 PM

Is the domain a dot ca or dot com?

**stueynet** · 01-07-2009, 09:41 AM

.com

**karter9977** · 01-07-2009, 11:50 AM

Pm sent

Thanks,
Steve

**stueynet** · 01-07-2009, 01:00 PM

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.

**Banned: theinvestor** · 01-07-2009, 01:03 PM

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.

**stueynet** · 01-07-2009, 01:09 PM

Originally Posted by theinvestor

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?

**Banned: theinvestor** · 01-07-2009, 01:12 PM

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.