Company registers TM 3 years after I reg'd the ".COM" what happens???

[MainstreamDomains]

Company registers TM 3 years after I reg'd the ".COM" what happens - if they want the domain?

 

[akcampbell]

They would have to prove you registered it in bad faith if they made a UDRP complaint. If they were trading under the name when you registered it, that would help their case. However, even if this was the case which I doubt from what you have posted, they haven't done anything about it for 3 years and that would count against them.

The key thing for you to do is not give them any ammunition against you for claiming bad faith. Don't let PPC ads display on the site that link to the new company or their competitors and don't quote prices for the domain if somebody approaches you. Tell whoever contacts you that you hold it for development and that they are welcome to make you an offer for the domain but any offer would be unsolicited.

If a company trademarks your .com or starts using your keyword after you registered a domain, it can be a blessing in disguise. iReport.com is a pretty ordinary .com but it sold for $750k because CNN stood to make alot more than that by using it.

 

[domaingenius]

Company registers TM 3 years after I reg'd the ".COM" what happens - if they want the domain?

Have they actually got the trademark, or applied for it ?. Is there anything on your website with that domain name ?. Have you objected to the TM ?. I have started going on offensive in such situations ,as you know the old adage "attack is best form of defence".
I think that played right you have good chance to make a good sale.
DG

 

[MainstreamDomains]

a little more info about the situation...

1st the company emailed me about given domain and if I'd be willing to sell.

Then they called me wanting to work out a tentative price, which I know believe to be too low because of the underhanded actions they took. That being they just recently applied for the trademark, after deciding to develop a software with that name. I will say they are backed by a large venture capital firm and other large software design firm - but what got me was that on the phone they said "we just want to know if theres going to be a legalieties with the trademark - I said there are none on it - they replied yes there is...we talked about escrow, convo endedm said they'd get back to me on monday...I do a little research on their site and company and find out they just recently started working on this b2b software that they have chosen the same name for as the domain I purchased in early 2005.

I would like to know how to continue talking to the potential buyer now that its come to light that they registered the trademark perhaps to try to gain legal advantage on the domain? but will that have any weight in court when I purchased the domain name 3 years before - there was nothing on the market with than name and I didn't know about this software firms intent to create software with that name untill this week...

 

[domaingenius]

PM sent

 

[MainstreamDomains]

thanks for the PMs but I prefer not giving details as to the domains name for obvious reasons - but if we just go on the given variables - who's favour would the situation be in. They did not disclose to me that they are the ones that applied for the trademark - 3 years after i reg'd the .com! This makes me hisitant to deal with them, yet on some levels I do want to finalize the sale. THe amount Im asking relative to the size of the purchasing company and the marketability and appeal of the domain is rather low. Should I be asking for more and will this be unprofessional or hurt my chances. Or can I play hardball and say had they been honest and said that they had put in application for the TM and were now trying to secure the domain from me, I would sell at the almost-agreed upon price - however, undisclosed information and falsehood's (claiming "some company has the TM reg'd" not stating that they are indeed that company...has led me to approach this situation differently and ask for more considering their underhanded tactic of registering the TM 3 years after me and not disclosing that info.



Sha

1-888-60-BUY-IT

please feel free to call if you have valuable input, but I will not disclose the name of the company nor domain involved.

 

[dolansco]

Register a trademark in another country on the domain .. can be done for a few hundred dollars .

ie assume again the domain is ireport.com , then register a trademark as an internet consultancy company or smt. called "Ireport.com Consulting", also put up a simple template site and fill about your "real" consuling company .

Then you have legitamite use of your domain & trademark .

 

[dvdrip]

Register a trademark in another country on the domain .. can be done for a few hundred dollars .

Waste of money. Panelists are not that stupid.

Company registers TM 3 years after I reg'd the ".COM" what happens - if they want the domain?

Just watch out what ads you serve and you have nothing to fear.
If you have tell them a price, stick to it and close the deal.

Is the trademark in Canada?

 

[Focus]

Tell them it's your cat's name and that you never got around to putting up a site as you planned with pictures...don't run any ppc ads on it. Sometimes you hold the cards and have the right to play hardball...this is one of those cases imo

 

[MainstreamDomains]

more feedback please...still unclear

 

[Dave Zan]

more feedback please...still unclear

Simple answer would be not to do anything that might confuse users with the
trademark, if any, of the party in question. Don't put PPC ads on the page, no
associated content (with commercial use) with the mark, etc.

The tough part is trying to negotiate a high-enough price without giving them
any possible ammunition to use against you in a future dispute. It's been done
before...which seems mostly to produce results against the registrant.

Be ready to retain competent legal counsel. Given you're from Toronto, you've
got Zak Muscovitch.

 

[MainstreamDomains]

Simple answer would be not to do anything that might confuse users with the
trademark, if any, of the party in question. Don't put PPC ads on the page, no
associated content (with commercial use) with the mark, etc.

The tough part is trying to negotiate a high-enough price without giving them
any possible ammunition to use against you in a future dispute. It's been done
before...which seems mostly to produce results against the registrant.

Be ready to retain competent legal counsel. Given you're from Toronto, you've
got Zak Muscovitch.

Well with regards to PPC ads - whether or not ones that compete with the TM registrant were displayed I dont know and did not care as at the time I did not know some company had gone ahead and registered a trademark in the name of a domain I own - so I wouldnt even know another entity existed with that name

- and as far as I'm concerned, since I registered the domain and hence created the "name" I would not suppose anyone would try to create a software with that name 3 years later - which is what I intended to do with it - but it takes me much longer to develop software that a large firm (due to costs.)

thanks for the info dave and everyone else!!!

 

[dvdrip]

Well with regards to PPC ads - whether or not ones that compete with the TM registrant were displayed I dont know and did not care as at the time I did not know some company had gone ahead and registered a trademark in the name of a domain I own - so I wouldnt even know another entity existed with that name

You are right on the first part. But now you know about the TM, so you need to be careful. Even if you had microsoft.com before Bill Gates was born you wouldn't be able to sell software now. That is if you weren't already selling software when microsoft started selling software... Clear?

 

[MainstreamDomains]

what if I have been selling software. Software that I am liscenced to resell not ones that I fully own - but either way...

 

[dvdrip]

Do you have proof that you are licensed?

If we don't know the domain it is a bit difficult to say...
Is the domain generic? Is it something like dvdsoftware.com?

 

[MainstreamDomains]

yes...have proof of being lisensed

 

[stock_post]

Than you can continue to sell.. And no one can do anything about it.
given that you started selling the software before they got the TM

 

[boz]

Is their trademark registered in Canada? Or the US? Just go ahead and begin a trademark registration in another class.

OR

Play hardball with them and tell them how much you want. If they really want the name, and you really want to sell it, you'll find a mutually agreeable point somewhere.

Remember, the buyer always pays too much and the seller never gets enough.