Classic TM quandary-Company has just filed for TM on my 5 year old domain-What to do?

[NamesBond]

Hi All,

During a routine TM review of my names, I discovered that a Florida company recently filed for a TM of a non-generic name, to use for a product they plan to bring to market. The name is identical to a dot-com I regged almost 5 years ago. (Name is currently parked at SEDO)
My question is, "What is the best way to proceed?" Should I file an opposition to the TM filing? Approach Corp. regarding acquisition of the name? Do nothing, let the TM be issued, sit back and let them come to me sometime in the future? What do you think?

Thank you to all, in advance, for any and all feedback. :smilewinkgrin:

 

[katherine]

Perhaps the company will approach you.
I would just wait.
In the meantime be careful with the sponsored links.

 

[angel69]

Katherine is right, that's the wisest, but remember that the fact you regged/bought the name a long time before they even applied for a TM will help you in a big way in a potential fight but it's in no way a guarantee you'll win, you could not have possibly done it w/malice unless they could prove that product existed back then and you knew of it, which in your case they cannot, this area is kinda new to me but I feel filing an opposition to a TM app would be real expensive, is the name worth it ? you'd need to make a strong case you're utilizing the domain fully imo, WIPO is very anti-domainer in cases like this especially when the domain is not developed

OTOH approaching that co about your situation may work out OK but it is a real risk, you'd in fact be "outing" yourself to them even if you've done nothing wrong, no way to know how the co will react, is it a valuable name ? if it's not then don't lose any sleep, worst case is they'll "take" your domain if they win the fight but they'll have to spend at least $1,500 for that first (the claimant pays for the WIPO litigation so it's not every co that opts for a UDRP, your co here may just not bother) funny, I just started right now a thread on the cost of WIPO mediation in case that's where this other co is taking me in my own case, but mine is just similar to their TM, not the same, and like you I bought the name a few years before they applied for a TM, just make sure the parked page doesn't attract ads for their own product/services, if it is then they may have a strong case

 

[jasdon11]

Personally, I would file an objection to the TM...or contact the company to state that you intend to do so unless they agree to confirm now, that they have no claim to your domain name.

Sitting back and doing nothing means you have no power over anything they may be planning.

You have nothing to lose and all to gain by making them aware of your concerns as soon as possible.

 

[Maxwell]

Consider your original purpose in registering the domain name... to sell it for a profit. But not necessarily to them; particularly because at that time, they did not even exist!

You stand to gain nothing in opposing the trademark registration. Never mind the fact that it will be expensive (and is no guarantee of success), it actually hurts you, as if you were to bar them from using the mark, they would then have to pick another name, rendering your domain worthless to them.

I think your most prudent course of action here would be to do just what Katherine said; keep an eye on your PPC ads, make sure they do not have anything to do with these peoples' wares, and stick by your guns, in that you registered this name much before they came into existence.

The best that can happen: they buy it off you and you make a nice tidy profit.

The worst that can happen: it just sits there and you pay the renewal fee. Big whoop.

This is more or less just "doing nothing". But at the same time, defending your rights to the greatest possible extent by ensuring that the ads which show up when you go to the name can't allow for a case to be made against you.

Also, if the name is earning little or no revenue, consider parking it at a more "sales-friendly" service such as domainnamesales. I have no experience with them, but it is my opinion that they solicit a sale much more aggressively, and for a much higher dollar value than Sedo does.

This sale is more or less "in the bag", so to speak, so I'm thinking it is in your best interests to have all your ducks in a row for when the time comes that it might occur to them to buy your domain.

 

[Theo]

Just point them to SaveMe.com

 

[jryan777]

If the name is valuable to you and you intend to use then it's a brand you created and I would'nt wait... Silence is a slow death.

I've spent a lot of time and money with my patent & tm attorney over the years. General Motors / Hummer, Porsche, Retail companies, Progressive Ins. + others, never lost, because I didn't wait and educated myself on any previous case law. Although, HummerH2.com was the most surprising victory years ago.

I spend lots on legal fees whether it's my premium domains, non-generic brands I've created and intend to use or Trademark names of multi-national companies I currently own. If you're reasonable they are going to pay you a fair price vs. paying tens of thousands in atty fees. fighting a battle they don't even know the outcome of. If you are going to use it, just because you didn't file TM first doesn't mean the worst - but I would create a moment of commerce with the brand quickly to give you more strength if that is your intention.

My two cents from 18 years of branding and domaining from Fortune 100 down to Mom and Pop.

 

[jasdon11]

The best that can happen: they buy it off you and you make a nice tidy profit.

If they are inclined to buy it, they'll probably do so at this stage, so why wait. Also, approaching them now before they get a TM means you can negotiate freely.

The worst that can happen: it just sits there and you pay the renewal fee. Big whoop.

Nope! The worst that can happen is that they try hijacking the name after they get the TM. So you're then faced with shelling out a non-refundable $1500 for a 3 man panel. Plus another 2 or 3 grand in legal fees, just to keep your name. Add in your time element involved and some stress in trying to keep your domain, and that's a lot of aggravation for no gain.

Doing nothing now is asking for trouble later. An email sent now could net you a nice sale, or at least offer you a great deal of protection.

 

[Gerry]

Personally, I would file an objection to the TM...or contact the company to state that you intend to do so unless they agree to confirm now, that they have no claim to your domain name.

Sitting back and doing nothing means you have no power over anything they may be planning.

You have nothing to lose and all to gain by making them aware of your concerns as soon as possible.

Kudos to a very good strategy.

Every TM goes through a posting stage of 90 days, allowing for objections. Perhaps, by posting an objection based on the fact that you own the domain name that is a direct match to the TM application, advance notice is given as an objection even thought this name will still pass the TM filing.

Very, very, very good idea.

 

[katherine]

I don't think it's a good strategy because the domain is currently parked at Sedo, not developed. Therefore no TM rights whatsoever have been acquired through development and usage. You own the matching domain, so what ? On which grounds are you going to oppose a TM ?
You could still claim intent to use but after 5 years of non-development your claims need strong backup.

Maybe now is a good time to unpark the domain and set up a little something, in order to consolidate your preexisting ownership rights and avoid problematic sponsored links you would not want to see displayed. Frankly I doubt that the Fla company didn't check the domain but you never know. Even Google have launched new products without securing the domain first.
You are normally safe because the domain was registered well before the TM buy you still have to make sure your domain will not be used in a way that would infringe on the TM.

IANAL of course.

 

[jasdon11]

I don't think it's a good strategy because the domain is currently parked at Sedo, not developed. Therefore no TM rights whatsoever have been acquired through development and usage. You own the matching domain, so what ? On which grounds are you going to oppose a TM ?
You could still claim intent to use but after 5 years of non-development your claims need strong backup.

Huh? You don't need to show anything other that you have the domain name, and the company going for the TM have no rights to it.

Maybe now is a good time to unpark the domain and set up a little something, in order to consolidate your preexisting ownership rights and avoid problematic sponsored links you would not want to see displayed. Frankly I doubt that the Fla company didn't check the domain but you never know. Even Google have launched new products without securing the domain first.
You are normally safe because the domain was registered well before the TM buy you still have to make sure your domain will not be used in a way that would infringe on the TM.

IANAL of course.

You're thinking all defensive...by going on the offensive you'd be showing no registration in bad faith. You could pretty much do what you liked with it after that.

 

[katherine]

Huh? You don't need to show anything other that you have the domain name, and the company going for the TM have no rights to it.

That's not the point, the company can still file the TM but they do not have automatic rights on the domain as it predates their TM registration. The domain is not at stake here.

Q1: I just got a notice of opposition. What's an opposition?

A: An opposition is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he can file an opposition. For more information, see TBMP Section. 102.02.

http://www.uspto.gov/trademarks/process/appeal/guidelines/ttabfaq.jsp#piq1

An opposition is typically a claim filed by the owner of another registered trademark alleging that the issuance of the new mark is likely to cause confusion in the mind of the consuming public

http://www.houstoninternetlaw.com/trademark/trademark-opposition.html
In my view no TM rights accrue from a mere parked page even if the name is distinctive, because the domain is not developed, not even branded around a 'trademarkable' concept, it's not like building a brand through bona fide commercial use.
So how exactly is the newly filed TM hurting you ? Yes, you will have to be more careful with the domain from now on. That's the price for sitting on a domain and doing nothing with it.

I would love to see a lawyer chime in.

 

[jasdon11]

Katherine, I don't think we're talking about the same thing. I'm not suggesting that the domain owner has any TM rights on the name, but just to make his presence felt to the company trying to obtain the TM for the term. Reasons for that are; to make them aware that the dn owner will not stand for any reverse hijacking nonsense if that's what they had in mind; and at this stage the dn owner can make it known whether or not they might be interested in selling the name.

At the very least it puts the dn owner in a much stronger position for any eventuality.

Sitting back and waiting for the company to get a TM, not knowing what they might have in mind, is crazy.
A. Chances of that company coming and offering a substantial sum for the name: 5-10%
B. Chances of that company offering a low amount for the domain: 10-30%
C. Chances of that company never approaching owner for the name: 30-70%
D. Chances of either B or C happening and getting hit with a UDRP: 15-25%
E. Chances of the domain value being harmed by the granting of the TM: 90%

 

[Gerry]

Plus, An opposition is typically a claim filed by the owner of another registered trademark.

I personally think it is a very good strategy. It will allow the domain owner an opportunity to express his concerns.

 

[Maxwell]

I don't think it's a good strategy because the domain is currently parked at Sedo, not developed. Therefore no TM rights whatsoever have been acquired through development and usage. You own the matching domain, so what ? On which grounds are you going to oppose a TM ?

Exactly! I can't claim rights on a term just because I feel like it. Owning a domain name does not give one rights to a term. If it did, I could register, say, Microsoft.com, in some obscure extension and then claim rights on it.

 

[Maxwell]

Nope! The worst that can happen is that they try hijacking the name after they get the TM. So you're then faced with shelling out a non-refundable $1500 for a 3 man panel. Plus another 2 or 3 grand in legal fees, just to keep your name. Add in your time element involved and some stress in trying to keep your domain, and that's a lot of aggravation for no gain.

Doing nothing now is asking for trouble later. An email sent now could net you a nice sale, or at least offer you a great deal of protection.

Well, taking it to WIPO won't do them any good, as they have no case against the domain owner. The domain was registered before the trademark was registered, so how can he be accused of infringing on a mark, which, at the time, did not exist?

In my opinion, emailing them now is the WORST thing you can do, as...

a) it is evidence that you acknowledge their existence; thus, you cannot say you've never heard of the mark

b) any attempt you make to sell the name, could be perceived as bad faith

If they do start up a WIPO against you, it costs THEM money, not the domain owner.

Sure, you might want to pay a lawyer a flat rate for a simple response of "This domain name was created prior to the complainant's attempt to register a trademark on the term", or something to that effect.

That was a major factor in Rick Schwartz's victory in SaveMe.com, that the domain name was registered much before the clowns who filed suit against him even existed.

So, if a UDRP does come the OP's way, surely he should respond to it (not responding to it is the worst thing you can do), but I'd keep quiet before that. Let them be the first ones to open a dialog.

Remember, when they come to you, they're ASKING you a question (i.e. are you willing to sell the domain name?), which allows you to TELL them as you please (i.e. "no", "yes, but not for less than $10,000", etc.).

If you ASK them (i.e. "does this domain name interest you for the sake of protecting your brand?), then they are in a position to do the telling. Not just telling you something (i.e. "We own that trademark!"), but telling the arbitrator as well (i.e. "respondent attempted to sell the domain name to us").

 

[Gerry]

One thing that may help NOW...

• Create a landing page with basic contents.
• Put COPYRIGHT © symbol in the footer.
• Make sure your content is different from the product or services the TM applicant is applying for.
• Create a header graphic/logo and also © that

And when you put that copyright © in the footer, make sure you place the dates of 2007-2012

ie, Copyright © 2007-2012, NamesBond.

Substitute Namesbond with any other entity (LLC, LTD, INC, etc.) you are known as.

Copyrighting can be claimed for any intellectual material, including art and content (literature, text, songs, etc). You do not need to pay a fee or file anything to claim a copyright on intellectual material.

Be sure that your site/lander is so far removed from anything the TM applicant is trying to get a TM for. If the TM holder is paint manufacturer, then you want to be in the cow manure methane gas research. In other words, make it so far to the opposite end of the spectrum. Don't appear to be "confusingly similar". Appear to be legit but different to also defeat the "registered in bad faith", especially with the inclusion of the dates in the copyright.

 

[jasdon11]

Well, taking it to WIPO won't do them any good, as they have no case against the domain owner. The domain was registered before the trademark was registered, so how can he be accused of infringing on a mark, which, at the time, did not exist?

In my opinion, emailing them now is the WORST thing you can do, as...

a) it is evidence that you acknowledge their existence; thus, you cannot say you've never heard of the mark

b) any attempt you make to sell the name, could be perceived as bad faith

If they do start up a WIPO against you, it costs THEM money, not the domain owner.

Sure, you might want to pay a lawyer a flat rate for a simple response of "This domain name was created prior to the complainant's attempt to register a trademark on the term", or something to that effect.

That was a major factor in Rick Schwartz's victory in SaveMe.com, that the domain name was registered much before the clowns who filed suit against him even existed.

So, if a UDRP does come the OP's way, surely he should respond to it (not responding to it is the worst thing you can do), but I'd keep quiet before that. Let them be the first ones to open a dialog.

Remember, when they come to you, they're ASKING you a question (i.e. are you willing to sell the domain name?), which allows you to TELL them as you please (i.e. "no", "yes, but not for less than $10,000", etc.).

If you ASK them (i.e. "does this domain name interest you for the sake of protecting your brand?), then they are in a position to do the telling. Not just telling you something (i.e. "We own that trademark!"), but telling the arbitrator as well (i.e. "respondent attempted to sell the domain name to us").

Well, it's not my name, but I know what I'd be doing if it were...and that wouldn't be sticking my head in the sand.

I can't be bothered pointing out where, but your response shows a level of ignorance that could be expensive for anyone following it.

 

[angel69]

Jasdon11, you're underestimating the power companies with money have to slap you w/a C&D at once, just like that, w/o any previous attempt to 'resolve' the thing or find a solution moneywise. Not only do I know this happens, but it happened to me recently. I was told to 'use my head' and that there was no way a business in its right mind would pay at least $1,500 for a UDRP fight + lawyer fees, instead of getting a domain from me for a couple of hundred. Well, I 'used my head' and it didn't do me any good. We owned an acronym that meant nothing. Then a bunch of hillbillies in the middle of nowhere in some old-world country, who can hardly speak any English, decided we were infringing on their "tradename" because our acronym 'contained' their company/website letters. It made absolutely no sense as a claim but they did it to me and got away w/it. The letters in their "service" were included in our acronym, as if they had owned BRA.com and our acronym had been TBRAX.com. It was that absurd. When I approached them simply telling the truth that we had never heard of their company or services or website I was called a liar. I gave them a low offer and they did not even bother to respond. So not only did they first contact me with a C&D but they did not even make me some insulting offer after my email which I just might've accepted. The 2nd time I heard from them was the actual UDRP which I didn't have the money to fight. On hindsight, I should've defended myself but I feel I would've lost it anyway, my 1st TM dispute ever. Lawyers charge mid-$XXX's for just answering a UDRP to the claimants and respond to the registrar, initially. After that it's several thousands to fight the case. And the domain was worth low-$XXX at best. We lost, but they had to spend the UDRP filing fees and I assume the lawyer charged them money (adding insult to injury, good old Go Daddy made $70 from me ! $20 for 'receiving' a C&D and doing nothing more, plus $50 for the 'service' --as they call it-- of simply receiving a UDRP and doing nothing at all, and I mean nothing, except locking the name until the case was decided, I could've done that for free. I don't kow what makes me angrier, the fact that I was called a liar over and over and the panelists sided w/them and we lost when they had no proof, or watching the Go Daddy crooks make a $70 profit out of my misfortune. On top there is of what I paid for the name in auction a few years earlier. I'm still fighting the cc charges GD made but they aren't answering me)

When you tell the TS to take the initiative and contact that business he'd better realize what consequences may follow. Maxwell did make excellent points and you cannot categorize them as "ignorant" even if you don't agree. Since my initial post agrees w/Maxwell then mine are just as "ignorant" to you, right ? lol. And even if I were making some points some would consider "ignorant" there are other ways to put it, you're a long-time Exclusive member. And his are far from ignorant. Contrary to what you stated the TS has a lot to lose, or at least a lot to risk. I'm not advocating being 'afraid' of all companies and the TS does have a fact working in his favor, he regged the name long before the TM was filed. But so was my case. I predated the complainants by acquiring the domain in auction years earlier. He is correct and so is Katherine and she's an extremely knowledgeable domainer. Maxwell is right the TS should consider why he got the domain and still wants it now. Is it worth fighting for ? Like Maxwell said, wait for them to contact you, otherwise you'll run the risk of knowingly trying to profit by selling to them, plus you won't be able to claim later you didn't know the company and this TM existed, for example. If the TS really believes in his domain then he should go all out, perhaps. Katherine is right, watch the ads the parked page generates and look for conflicts. He did not develop the domain so simply parking it could help in some way (but, one of the arguments made against us was that we 'just had it parked and had not developed it' implying domainers are nothing more than name trolls and I was one) So another way to look at this is that 'just parking' could also hurt you, NamesBond should weigh all that (if he had developed the domain into a website totally unrelated to that product space that would give him a leg up and he might still choose to do this)

In the limited research we did, UDRPs are almost invariably decided against the domainer, usually the respondent, and what's worse, WIPO, NAF, etc, are ALL heavily in favor of the COMPLAINANT, normally not the domainer, because if they start ruling against complainants there won't be as many bullies paying $1,500 for a one-person panel --let alone three times that for a three-person panel-- as those bullies will begin to think twice about taking people to a UDRP process. Those of you who follow legal stuff know these observations are actually facts. I'd tell the TS to weigh options carefully before approaching the company, he might be jumping the gun when he didn't have to. The two coexisting indefinitely (the business/product w/a TM and the TS w/a webpage/website) is probably not sustainable. Chances are they'll contact NamesBond at some point telling him to turn the domain over to them, and no, they usually will not make you an offer, you will need to bring that up (the domainholder will) Consider selling the domain NOW. I'd entertain that if I were you. Offense (as advocated by Jasdon11) would not be the preferred course of action. Defense, ie waiting to be contacted by the TM holder, is wiser as you've done nothing wrong and you handregged the domain long before a TM on it was even filed, and you haven't developed into a website/business conflicting w/the TM owners. And Katherine is also correct on all her posts. I do get the points madeby JRyan777 but do you have the resources JTyan777 obviously enjoys ? lol, very few of us can do what JRyan777 does in real life and has suggested in his post. If you regged the name and didn't buy it in auction at a high cost then ask yourself what your domain is worth in today's market. And even now I'd concur that anybody w/any common sense should want to buy the name from the domainer at a cost far less than a WIPO/NAF battle, but as I can attest to, that's not always the case. A lot of cases have ended in awarding the domain to the TM holder even if the domainholder had owned it for years and there was no interference w/the TM owner's space. Good luck and I hope you can come to the correct decision (and I hope those of you w/o vast TM experience can learn from my case, I don't advocate "giving in", I just say "be realistic" about what you face, and what you'll be left with even if you should win, in my case it would've been my pride..... and nothing much more, except endless lost hours and a worthless domain)

 

[Chappy]

Just note the relevant date is not when they filed the TM but it's whenever they claim the TM was first "in use" (can be years before the TM filing if they can prove it).

angel69 - sorry to hear that story. I recommend to always respond to a UDRP. Some of the panelists are practical and may have seen this was BS. You don't need lawyers - you can do it yourself at no cost.