Trademark Question

[dr00t]

Hello, I have a quick question regarding a trademark infringing domain name...

The domain name was registered in 2002 and my trademark was finally approved and finalized this year. The domain that is in violation of my trademark is simply parked and doing nothing. The owner has already shown bad faith by demanding "five figures", so in this event, can I file with WIPO and probably win my domain or are they going to have the rights to it because they registered it many years ahead of my trademark?

Any insight is appreciated.

[raoul]

i have no ideaa if it works like this, if it is, its rediculess. A new type of biz is born, search some nice websites wich have no trademark and simply apply for one

[caper5]

How is is bad faith to ask for five figures? If they had it before your trademark and are not doing anything with it that is not Bad Faith. Your trademark is good for the business you are in. Others can still use that name for a different type of business.

You will lose with WIPO.

[draggar]

I agree. They had it long before your TM was approved thus no "bad faith" in their registration. I'll admit, asking 5 figures for the domain because of your trademark is bad karma (unless it is worth 5 figures) and unfortunately bad karma is not against any law.

Hopefully you registered other TLDs (.net, .org, .info, .us, etc..)

[caper5]

It could also be that he just does not want or need to sell it. I imagine he registered the name because he likes the name.

He probably doesn't even know that the person asking for the domain has a trademark on it. And if he does maybe the email was more of a threat and he just has no interest in selling to someone that threatens him when he knows he is in the right.

[dr00t]

Well, quite a sprinkle of random responses here. To clarify, I was ASKING for a reason... so please take that into consideration here. In addition to that, I have not told them about the trademark, so no "threatening" emails were sent.

Also, I doubt this person regged the name for the fact that they like it, then parked it at a known domain parking company. My research shows the same person owns around 5,000 more domains too. He is definitely in the domain business.

But lets take an example like this... (pretend that this is a present day scenario)

Joe Smith gets word that "Bill Gates" (the local high-school computer nerd) is starting a computer company, and he plans to call it Microsoft. He has like 200 dollars to his name at the time, and obviously doesn't realize the importance of a trademark. So Joe Smith, another computer nerd with domain knowledge, goes and registers "Microsoft.com" because he believes Bill will be successful someday and want to buy his domain.

This is a mighty good speculation, but in the end, Bill Gates is the one who has to buy the domain at the five figure amount.

Even though the domain was registered before the trademark in this example, does that mean that Joe Smith can demand a five figure number for the domain that is key to his business operations?

I appreciate the responses thus far. Any more insight or knowledge would be beneficial to me.

[caper5]

Sorry I didn't mean to sound rude.

So in 2002 he knew that you were going to start a business and was aware you were working on something with that name? It is Unfortunate, but people can ask whatever they want for a domain name. Unless you are a McDonald's or another famous company many people can use the same name for different types of businesses with or without a trademark.

Again, I am sorry if I can across as brash in my posts.

[dr00t]

No, you're fine. No worries.

I appreciate the response, but it appears that it will probably come down to money unless anyone else knows of another loophole? ;D

Thank you all for your input.

[onlinetv]

You have no loophole. His ownership is prior to your filing. He is not even competing parked. Always hard to bite the bullet.