how can we get our domain?

**jsonline** · 05-28-2008, 04:37 PM

We own a trademark on a name, the .com is taken but not being used. How can we go about getting the .com turned over to us if at all? The registrant does not want to release it and the UDRP is a bit costly.

**draggar** · 05-28-2008, 04:48 PM

Your two main options are already mentioned. Buy it from the owner or file a UDRP. I'm facing the same dilemma w/ one of my clients (someone .com'ed his name and is selling illegal copies of his book).

**jsonline** · 05-28-2008, 04:57 PM

No chance of a court of law turning it over if we sue and he does not show up to court? He does not live in the USA.

**Rockefeller** · 05-28-2008, 05:01 PM

Is it a site or is it parked?

**myst woman** · 05-28-2008, 05:03 PM

yes I want to follow the saga

**jsonline** · 05-28-2008, 05:03 PM

it is parked

**Rockefeller** · 05-28-2008, 05:07 PM

Like they said earlier, you'll have to either buy it from the owner or file a UDRP...both will cost you money...nothing is free anymore.

**jsonline** · 05-28-2008, 05:21 PM

not looking for free but does my trademark protect me against this guy holding my name hostage for tens of thousands of dollars as he is right now?

**Leading Names** · 05-28-2008, 06:27 PM

Originally Posted by jsonline

not looking for free but does my trademark protect me against this guy holding my name hostage for tens of thousands of dollars as he is right now?

Does your trademark predate the registration of the domain?
Is the current use conflicting with your trademark rights?
Is the trademarked term generic/descriptive?
Have you established trademark rights through use or is it simply registered?

- Rob

**jsonline** · 05-28-2008, 06:32 PM

Does your trademark predate the registration of the domain?

No it does not.

Is the current use conflicting with your trademark rights?

He has it parked, so I would have to say no.

Is the trademarked term generic/descriptive?

very descriptive.

Have you established trademark rights through use or is it simply registered?

It is registered and used in commerce

**Banned: theinvestor** · 05-28-2008, 06:34 PM

jsonline,

Unfortunately...he has every right to the domain. Especially if he has owned it prior to your trademark. He is in no way making profit off your trademark nor is he causing any type of damage.

If you plan to file UDRP, be prepared to lose. In my opinion your only choice is to buy the domain from him.

Good luck though.

**Leading Names** · 05-28-2008, 06:42 PM

It isn't looking good for you from a legal standpoint

1. He registered the domain before you registered the TM - domain not registered in bad faith.

It's a TM on a descriptive term (harder to defend)

Its been used in a way that doesn't conflict with your TM.

He lives in a different country.

- Rob

Originally Posted by Leading Names

It isn't looking good for you from a legal standpoint

1. He registered the domain before you registered the TM - domain not registered in bad faith.

It's a TM on a descriptive term (harder to defend)

Its been used in a way that doesn't conflict with your TM.

He lives in a different country.

- Rob

Edit: BTW, not a lawyer – that's just my understanding of trademark rights/UDRP.

I'd try and buy it from him.

- Rob

**DomainsInc** · 05-28-2008, 06:53 PM

Why do you think you have automatic rights to a domain just because you have a trademark on the word?

**jsonline** · 05-28-2008, 07:29 PM

I never said I think I have automatic rights, I was asking what my rights are if any.

**DNQuest.com** · 05-29-2008, 08:27 AM

TM holders do not have exclusive tights over a domain name, so with that in mind, if you do decide to go a challenge route, there could be a case of reverse hijacking against you. But what to watch out for: If they change their sight and start referencing you or your competitors in an effort to confuse the consumer. Though if it is descriptive, that oculd be a hard argument to make, but still an argument.

**draggar** · 05-29-2008, 08:39 AM

Originally Posted by jsonline

Does your trademark predate the registration of the domain?

No it does not.

As others have said, this will make most WIPO cases ruled in favor of the domain holder.

Originally Posted by DNQuest.com

TM holders do not have exclusive tights over a domain name, so with that in mind, if you do decide to go a challenge route, there could be a case of reverse hijacking against you.

Agreed. Right now your best bet is to offer to buy the domain from them. If you offer what you think it is worth (in reality, offer less than what you're willing to pay but still make it look reasonable) and they flat out refuse, then they might not be interested or considered your offer a "low ball" offer.

If they counter-offer, then you might have a chance.

But what to watch out for: If they change their sight and start referencing you or your competitors in an effort to confuse the consumer. Though if it is descriptive, that oculd be a hard argument to make, but still an argument.

Agreed. A common example here is if someone owned Apple.com. If I used it to sell apples (the fruit), apple products (apple pie, apple juice) and apple related products (fake apples, apple art, apple appareal etc.) then I'm safe. The second I have something that is electronics related they could get in trouble. The same goes for the TM holder. Watch the domain, make sure they don't try to cyber-squat you.

If you're unfamiliar with domains and purchasing I'd suggest looking into a domain broker, someone willing to step up to the place and negotiate a good price for you (don't ask me, I'm not good). They usually have a fee (5%? 10%? I don't know what the going rate is). Post in the help wanted area and people may give you offers. Find one that the price seems reasonable and someone you can trust.

Good luck!

**jberryhill** · 05-29-2008, 09:38 AM

the UDRP is a bit costly.

If the UDRP is "a bit costly", then I have to wonder what is the big deal.

The NAF filing fee is $1300.

Maybe its just me, but that works out to something like three months worth of telephone bills.

**jsonline** · 05-29-2008, 11:54 AM

costly in the sense that it is a good amount of money to toss out without knowing where my case stands first, hence the reason I came here. Thank you everyone for your help, I will place an offer on the domain and if he does not take it I will just watch the site and wait for him to slip and put the ball in my court.

**jberryhill** · 05-30-2008, 09:56 PM

it is a good amount of money to toss out without knowing where my case stands first, hence the reason I came here.

To get the opinion of a bunch of pseudonymous people who may or may not be batsh-t crazy and/or include the person who has this domain name you characterize as "ours"?

I'm having a throbbing pain in just under my left ribcage. Maybe I'll see a doctor, but... just maybe I'll ask whomever is up at odd hours on medforum.loons.net.

**jsonline** · 05-30-2008, 10:56 PM

Thank you. This is a community, I trust the people of this community to put it out there how it is with nothing to gain or lose hence the reason I came here with my issue ... considering it is a legal issue and you claiming to be an attorney and clearly being a paying part of this community maybe posting helping words or not posting anything at all would be better then thread bashing. Will I base my next move here 100% on what was said by everyone here or your posting had it been helpful, no ... but it is nice to get an outsiders opinion at times. Have a great weekend and thank you none the less for your post.