Not trademarked, but it's still our name!

[Chuckles2]

I am considering making an offer to buy a business. Since the fact that it's for sale isn't public information, I can't say its name here, but for the sake of argument, let's say it's "New York Hair Salon". No, I'm not buying a hair salon, (gawd no!) and it's not really in New York. But the name of the business is structured like my example: [city] [business type]. It is the name they've been using for 11 years.

Well, someone registered the domain December of last year. It matches the business name exactly with .COM. It's currently parked, and probably making good revenue referring visitors to local competitors (since after all, its very name refers to the location and business type.) It is clear that the person who registered did so because the business exists. (Hey, I understand... As a domainer I might be a little bit sorta guilty-ish of this myself. I own a few typos.)

The business doesn't have a web site yet but if I buy the biz it's the first thing I'll do. Its reputation, its literature, its (unregistered) logo have featured this name for over 11 profitable years. They receive checks in that name, and I know they have filed a fictitious name statement with the county recorder. (Although they never bothered to trademark it.)

So... If I buy the business, how shall I approach the current registrant? I want it.

[Edit: I regret making the following suggestion but I'm leaving it here fore context.] I would be happy to pay the year of registration he paid, "for his troubles," but as an owner of an established business I don't think we should enter a "negotiation" as if he should rightfully own it in the first place.

Please advise, thanks.

[Provider]

You will have to pay a market value for the domain name. Put a cost of acqusition for the domain name into your business plan. If you really think the name only worth a year
of registration you are not serious about your business

[Chuckles2]

Ah, yes that's it.... I'm not serious about the business. Sheesh! I'd like a second opinion. Maybe a less insulting one.

There is no question that this registrant targeted the business' reputation for personal gain.

Hey, I would have reg'd it long ago. The current owners simply aren't computer savvy, and they had no idea what to do.

I believe eleven years of using the name very publicly, plus a filed fictitious business name should carry legal weight. If I'm wrong, okay I would pay more... but I don't believe I should, and I still hope I don't have to.

Besides "Market value" would be almost zero if the business did not exist. I'd be happy to pay full market value for any portion of that market that isn't based on the business' own reputation.

Perhaps it's convenient that the registrant happens to live in the same county.

Anyone else help?

[Provider]

The business you are going to purchase doesn't own any trademark. Very high chances that you are not going to win a legal challenge.

You are using the phrases that are not used usually by people that understand domain name industry. For instance :

"I would be happy to pay the year of registration he paid, "for his troubles," ..."

"There is no question that this registrant targeted the business' reputation for personal gain. "

I am sorry but these terms usually used by people that don't understand that domain names registered on "first come, first serve" basis. I am not trying to insult you but you
are clearly detached from reality.

The reality is that there are only 2 ways to make money on domain names:
(only in basic terms)

1. Develop domain names into sites
2. Hold domain names, parked or unparked, and wait for the somebody who
will show up and offer money for it.

Please note that most of the domainers own many names, and they can't
develp them all, so it is safe to assume that 95% of all the domain names
people own here on the forum are parked and waiting to be sold to the
interested party. ...and here you come with the "I would be happy to pay
the year of registration" offer? Sorry, I don't think you are serious.

[maroulis]

Originally Posted by Provider

The business you are going to purchase doesn't own any trademark. Very high chances that you are not going to win a legal challenge.

You are using the phrases that are not used usually by people that understand domain name industry. For instance :

"I would be happy to pay the year of registration he paid, "for his troubles," ..."

"There is no question that this registrant targeted the business' reputation for personal gain. "

I am sorry but these terms usually used by people that don't understand that domain names registered on "first come, first serve" basis. I am not trying to insult you but you
are clearly detached from reality.

The reality is that there are only 2 ways to make money on domain names:
(only in basic terms)

1. Develop domain names into sites
2. Hold domain names, parked or unparked, and wait for the somebody who
will show up and offer money for it.

Please note that most of the domainers own many names, and they can't
develp them all, so it is safe to assume that 95% of all the domain names
people own here on the forum are parked and waiting to be sold to the
interested party. ...and here you come with the "I would be happy to pay
the year of registration" offer? Sorry, I don't think you are serious.

Well said... If you can't factor domain acquisition/website development/other online activity costs in your business plan I'll ditto you're not serious about your business.

Which also begs the question...

Why do you want the domain if you're not serious about your online presence?

[zenmarketing]

Chuckles,

I think people are missing the point.

Just because a trademark wasn't registered, doesn't mean a trademark doesn't exist.

If what you say is true, the business does have a de-facto unregistered trademark for the term. You stand a chance of acquiring the name in a WIPO suit. Depending on the strength and savvy of the current registrant, a mere threat of legal action may be enough.

Consult an attorney.

[maroulis]

Originally Posted by zenmarketing

Chuckles,

I think people are missing the point.

Just because a trademark wasn't registered, doesn't mean a trademark doesn't exist.

If what you say is true, the business does have a de-facto unregistered trademark for the term. You stand a chance of acquiring the name in a WIPO suit. Depending on the strength and savvy of the current registrant, a mere threat of legal action may be enough.

Consult an attorney.

I see you're very well versed in TM law.... Even the fact you mention "merely threatening" the registrar should do it...

how funny

[Acro]

Talk to movinconcierge he has Alexa charts and he's from California as well.

[mulligan]

Originally Posted by Chuckles2

.... As a domainer I might be a little bit sorta guilty-ish of this myself. I own a few typos.) ...

So if I want your domain (for whatever reason) you don't mind if I offer you a years registration fee for it?
Sheesh .. who do you think you are?

[Acro]

Originally Posted by mulligan

So if I want your domain (for whatever reason) you don't mind if I offer you a years registration fee for it?
Sheesh .. who do you think you are?

that brought a few chuckles.

[Chuckles2]

This is different... This is EXACTLY the company name. It is the only company that has ever used that name, and the name itself says exactly what they do and where they are. There is no other party on the planet who would have interest in the domain.

Ahem... see (iv) below.

Uniform Domain Name Dispute Policy, as approved by ICANN:

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.


Tell ya what... I'll post again when I have control of the domain name. (If I buy the business that is.)

[DomainsInc]

Well to me, a domain that is citynameandproduct.com is a generic. And to prove bad faith you'll have to show more than a parked page.

[Chuckles2]

Maybe this will clarify: I chose a poor subject line for this thread. It should have been: "Not registered, but still a trademark." That more accurately describes this scenario.

Originally Posted by DomainsInc

Well to me, a domain that is citynameandproduct.com is a generic. And to prove bad faith you'll have to show more than a parked page.

On its own, I agree that would be a fair and reasonable perspective... But I think eleven years of widely-publicized use, and a registered fictitious "doing business as" name should be persuasive. It was only registered in December.

I think my point would be more clear if I could say the domain name, and I'm sorry I cannot... But the nature of the business is such that only one or two such entities would exist in a given city. (Such as a zoo or planetarium, for example, although those examples are usually publicly funded.)

[Onward]

This sounds like a generic name to me...new york loans, new york florist, new york hair salon, new york auto repair ....all generic.

With your approach, you will never get the name....you will piss off the current valid owner who will in turn not sell it to you.

[Chuckles2]

Ponder this example: SanFranciscoZoo.com. The zoo does already own it, but for the sake of example, assume they didn't.

Let's say the zoo itself hadn't registered the domain, but now they want to use it and someone else nabbed it a few months ago. The zoo has been around for decades. Although I haven't checked, I doubt the zoo actually registered it as a mark, because there's no reason to... They are THE zoo of the city. For a proper comparison, let's assume that's the case... no registered mark but widely publicized use, as in the case I'm referring to.

Well, don't you think the SF Zoo could still get the domain, even without a registered mark?

[Acro]

Unless you bring up the exact name all you do is try to tailor names to suit your claim.

[KaneCo]

Why does every company think they own the right to the .com just because they are the name, is .com not a international ext. You should only have rights to the .us since it is a us company. Unless I violate your implied trademark by selling myself as you.

[Chuckles2]

I hear you Acroplex, but I just can't say the exact name here.

I regret something here: I agree my "pay him for his troubles " remark was out of line, and in reality I would start with a decent offer if possible, certainly more than a year's registration. If I acquire the business, it's worth a lot to me, but not to anyone else.

My reasoning for pondering only offering his costs is this: (Although it may not be fair to the registrant, it has logic) I am concerned that a substantial offer beyond his own costs could essentially be interpreted as an acknowledgment that he has a right to it. I do indeed believe it was registered in bad faith.

In short, I would be more than happy to pay far more than it's worth to him to keep. BUT... I'm afraid he'll attempt to gouge me, which isn't fair. A reference to a "market price" seems incorrect, since I would be the only potential buyer on the planet.

I would pay probably 6 years revenue as he has it parked. He's not making big bucks on parking... he's hoping this business will buy it.

[Onward]

If no one else would want the name, but you....the current owner may be reasonable...a mid xxx offer may get it. I will tell you good generic 2-3 word domains like you are after can be valuable parked...and it may take low to mid xxxx if not more. Starting with an xx offer will not get you a response.

[Creature]

Originally Posted by Chuckles2

I am considering making an offer to buy a business. Since the fact that it's for sale isn't public information, I can't say its name here, but for the sake of argument, let's say it's "New York Hair Salon". No, I'm not buying a hair salon, (gawd no!) and it's not really in New York. But the name of the business is structured like my example: [city] [business type]. It is the name they've been using for 11 years.

Well, someone registered the domain December of last year. It matches the business name exactly with .COM. It's currently parked, and probably making good revenue referring visitors to local competitors (since after all, its very name refers to the location and business type.) It is clear that the person who registered did so because the business exists. (Hey, I understand... As a domainer I might be a little bit sorta guilty-ish of this myself. I own a few typos.)

The business doesn't have a web site yet but if I buy the biz it's the first thing I'll do. Its reputation, its literature, its (unregistered) logo have featured this name for over 11 profitable years. They receive checks in that name, and I know they have filed a fictitious name statement with the county recorder. (Although they never bothered to trademark it.)

So... If I buy the business, how shall I approach the current registrant? I want it.

I would be happy to pay the year of registration he paid, "for his troubles," but as an owner of an established business I don't think we should enter a "negotiation" as if he should rightfully own it in the first place.

Please advise, thanks.

How do you know that the name is for sale if it's not public information? Your post makes it sound like you're a self confessed typo-squatter looking to move into reverse hijacking. The example domain sounds generic if the Salon is in NewYork and if the domain owner is earning good money from a generic domain then 1 years reg fee for his trouble would be laughable.