I refused to sell domain, now they are attempting to trademark the word. advice?

[WildCard]

I found this forum and love it! After seeing some of the posts on trademarked word/domain disputes I thought I would checkout my names to see if there's any potential hidden issues. I see from reading your posts that a lack of listing in the USPTO does not mean that all is clear - so no need to point that out.

Bought some domains in February, got an offer to purchase one of them 2 weeks later. The offer came through Afternic and was very low, so I counteroffered very high to see how the bidder was willing to negotiate. Never heard again from the bidder.

Seems that less than 3 weeks later he applied for a trademark on the name. Didn't notice til now. But another reason to love this board.

Here's the status of the trademark:

Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.

Date of Status: 2002-07-09

Filing Date: 2002-03-04

Any advice? Should I call the examining attorney and dispute? Note that the names are good, but not worth a lawyer battle. I don't mind fighting for myself, if the fight is feasable.

Thanks-
-WC-

 

[domainquestion]

Before some of the lawyers who read this forum write their expert opinions, I'll give you my decidely unexpert opinion.

If the trademark application is approved, that will not give the trademark owner(s) any rights to your domain name as it was registered by you before they attempted to trademark it.

 

[HOWARD]

as one of the lawyers - I agree with DOMAINQUESTION

 

[WildCard]

Thank you gentlemen! That's relaxing news.

Take care-
-WC-

 

[domainquestion]

In fact, their applying for a trademark is probably good news for you. It may make the domain a lot more valuable over time. If they have plans to market the trademark, they probably would have been wiser to purchase the domain from you before applying for the trademark.

To be extra careful however, you might want to consider building some kind of site for the domain before the trademark becomes live.

 

[drbiohealth]

Good question, Wildcard! This query holds much relevance in these times of reverse domain-hijacking. I am sure it is highly applicable to all those in domain name business. I am facing similar kind of a situation. I had registered a name long before I see an application getting cropped up at USPTO for the trademark registration of the exact name. Subsequently, I have been contacted by this company regarding the sale of name, but I have since declined their offers considering the price as low. I have not used the name since the registration and it has been sitting idle. They say they may approach ICANN to claim for using the name?

Don't understand their logic. How could somebody take away your name which you had registered in a rightful way?

Can anyone suggest what strategies can be followed in such cases?

Thanks

 

[Nic]

Make sure you have proof that you regged your domain/s before the filing of the TM.
That should help you

 

[jberryhill]

In the absence of some additional facts, there is not a correct answer to the question. I would want to know whether the trademark application was filed on a intent-to-use basis, or based upon prior use. If it is the former, you are probably okay, although there are a couple of things you might want to do now to avoid the expense of a dispute. Having the privilege of spending lots of money to be proven right at some point down the road is not everyone's definition of "winning".

If the application is based on use, then I would want to know what is their alleged date of first use relative to the domain name. Then I would want to know some more facts about you, your geographic location, their geographic location, and the details of the correspondence you mention above.

(insert usual comments about the use of the word "trademark" as a verb instead of a noun)

Federal registration of a trademark confers certaining rights pertaining to a trademark, but it does not confer a "trademark". I can perfectly well apply tomorrow for federal registration of a famous trademark I have been using for 100 years. Neither the filing date of the application for registration, nor the issue of date of a registration certificate, is the last word on whether I would have enforcible rights against you relative to a domain name you registered last week.

 

[HOWARD]

There have been a number of UDRP cases that have held that your non-use of the domain in question can be considered cybersquatting. My guess is that this is the reason that "they are filing a complaint with ICANN"

 

[drbiohealth]

Thank you all for your suggestions..

====================================
John regarding the details you asked for;
If the application is based on use, then I would want to know what is their alleged date of first use relative to the domain name. Then I would want to know some more facts about you, your geographic location, their geographic location, and the details of the correspondence you mention above.
=======================================


The domain name was booked in January of 2000 where as the trademark application from the company shows first use of the name as May 2001. The company is based in the US where as i am based in India. Regarding the correspondence,I first received an email from them saying that they would like to talk about the domain that I had registered. Subsequently, I replied back saying that if they wanted to buy the name, I might be interested if the offer was good. That's about the correspondence I have. I was later informed by a mediator that they might think of approaching ICANN if the the offer price was on the higher side.

Not sure what they have in mind. I am also not sure how safe I am. Please advise.

Thanks once again.

 

[Ari Goldberger]

I certainly agree that if the domain name was registered prior to the tradmark, the domain name owner should prevail, all other things considered equal. The reason is that it is impossible to prove bad faith intent on the part of the domain name registrant if no trademark existed at the time of registration. Moreover, many decision hold that a mere trademark application provides no rights under the UDRP -- although others have held differently. However, there are some other things to consider.

As with any domain name dispute, the outcome depends on the facts. The UDRP does allow a party with a "common law" trademark to bring a case. Common law trademark rights arise from mere use. However, if the domain name is generic or descriptive, the alleged trademark holder would have to prove "secondary meaning," i.e., consumers associate the trademark with only one source. This is a tough standard. And, the trademark holder would have to prove that you had actual knowledge of the mark prior to registering the domain name in order to establish bad faith registration.

 

[izopod]

Ari,

Looks like you've worked on some pretty high profile domain cases in looking at your website: Esqwire.com

Glad we have you on our forum!!


izopod

 

[domainicanicanica]

As further protection, you may just want to throw up an accompanying site WITHOUT having it refer to the name as being for sale.

 

[jberryhill]

In a UDRP dispute, the complainant must prove that the domain name was registered and used with a bad faith intent (such as one of the listed, but not limiting, examples set forth in the policy).

There are certainly many decisions which point out that a domain name registered prior to the time that the complainant began use of the trademark could not have been registered in bad faith. The few decisions to the contrary (such as the eresolution.com decision) are the rare exceptions to the general principle.

So, if in their trademark application, they are claiming a date of first use in 2001, and the domain name was registered in 2000, then in the absence of any extraordinary circumstances, pointing out the impossibility of bad faith registration would be a central aspect of a UDRP defense, if a dispute should arise.

The thing to keep in mind here is that arguments in UDRP disputes do not make themselves - someone needs to present the information to the panelist in a way that makes sense to the panelist. It is one thing to say, "a situation like this points to a strong defense", and "you will win". You would not win if your point is obscured by bad writing, or unstated assumptions of what the panelist might or might not know about prior decisions, or even the policy itself.

There is, for example, a rule which requires the complainant to attach a copy of the policy to the complaint. Think about that for a minute.... do you know why that rule is there? You should not take for granted that the panelist knows what the UDRP says.

A minor issue here that sometimes gets kicked around on the INTA mailing list (and I would heartily recommend that some of the folks here ask their questions on the INTA mailing list - at www.inta.org (the International Trademark Association)), is whether one can consider a "renewal" to be a new "registration" for the purpose of showing bad faith registration in a UDRP dispute. There are some panelists who have come close to considering this question, such as in the america.com dispute, but have typically veered off to find some other basis on which to decide the dispute. Efads.com is another interesting, and bad, example.

I would not say it was impossible for a panelist to someday look at the situation where a domain name is registered on date A, a TM is born on date B, and then the domain name is renewed on date C; and then to say that the renewal on date C constituted a new "registration" for the purpose of satisfying the registered in bad faith condition of the Policy.

So, yes, having registered a domain name before the TM claimant's own admitted first use of the term as a trademark is a "strong defense" type of case. Whether your circumstances have additional facts that would make it less strong, is of course beyond the scope of a general public discussion.

 

[drbiohealth]

Thanks John, Ari and everyone else for your illuminating suggestions.