Possible Trademark Issue with Pfizer - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**jbrinton** · 09-08-2008, 02:06 AM

I own a domain name with which I previously ran a nutritional supplement business. I had a website on the domain and was selling the supplement until the supplier went out of business a couple of years ago. After that, I removed the website and kept the domain parked. Since then, our trademark for the name has expired. I recently realized that Pfizer has named a drug the same name as our former nutritional supplement and has trademarked the name. It is an upcoming drug that they currently have in clinical trials.

I am not quite sure what to do at this point. I was going to use the domain for another nutritional supplement business but since finding out about this issue I have put everything on hold.

Can anyone offer some advice on what to do?

**Focus** · 09-08-2008, 02:15 AM

Well if your registration, ownership, & usage of the name in commerce pre-dates their trademark or product then you have very solid viable rights to it regardless of the new TM as far as I know, the domain and their TM are completely seperate issues. Most likely they will have to buy it from you if you wish to sell it and they wish to use it but I would un-park it or make sure it is just a generic parking page if that is the route you want/hope to go because sometimes they can claim you are profiting off their TM products if their products or services can be found on your site's ppc links and this can complicate things. Feel free to PM me the info and I can take a closer look for you if you wish. This is not legal advice, just my very knowledgeable opinion on the matter based on my experience in this area. Good luck!

Similiar case - Apple had to buy iPhone.com when they launched the product as the domain ownership and usage predated their product/service.

**Acro** · 09-08-2008, 03:33 AM

Consult with an IP attorney that can best advise you on the status of the mark and whether it can be brought back to life via amendments to the record.

**stewie** · 09-08-2008, 10:23 AM

Quote:

Originally Posted by jbrinton

I own a domain name with which I previously ran a nutritional supplement business. I had a website on the domain and was selling the supplement until the supplier went out of business a couple of years ago. After that, I removed the website and kept the domain parked. Since then, our trademark for the name has expired. I recently realized that Pfizer has named a drug the same name as our former nutritional supplement and has trademarked the name. It is an upcoming drug that they currently have in clinical trials.

I am not quite sure what to do at this point. I was going to use the domain for another nutritional supplement business but since finding out about this issue I have put everything on hold.

Can anyone offer some advice on what to do?

Hey you should get an lawyer if you can, and edit your post here on DNF remove the statement or edit your statement until you get legal advice your own words can sometimes come back and haunt you. just my thoughts

this was meant to be a private message and it went into thread????

and now there is no Edit button???

**EnricoSchaefer** · 09-08-2008, 05:33 PM

Based on the limited facts noted above, you are in a good initial position. Obviously, you did not 'register' the domain in bad faith. But there are some several things you should, and alternatively should not, do. There are other issues to consider beyond the UDRP. Feel free to give me a call.