Someone trying to take your domain?

[Deleted member 5660]

Well, I suppose I take issue with your rather broad brush statement that a domain reg before a trademark reg is a "slam dunk" with "no issues".

It just isn't as simple as that.

And the respondent in the above cited case might have prevailed if his/her actions would have been different. Take, for example the instance wherein an entity has common law rights to a mark through usage.

I believe it is safer to say that each arbitration has specific determinations, based on the evidence presented and the panels' interpretations of that evidence.

Moreover, as panels decide more cases, there is being built now a body of law and precedents that do not favour the casual, or professional, domainer...rather the trademark holder. It's becoming a bit more tricky these days, IMHO.

But, hey, that's just me.

[QUOTE Oh, and don't try to sell that TM name to the owner!

Too right, mate. Them days is gone fo'evah.[/QUOTE]

 

[EnricoSchaefer]

Approaching a TM owner is tricky. But if you have your ducks in a row (ie you have a legitimate purpose or non-infringing use, the trademark is not famous, the domain is not a typo, you did not register in bad faith, etc), there are strategies which allow for negotiation. We successfully negotiate with TM owners on behalf of domainers without threats of legal action. Rick sold his domain ireport.com to CNN, which obtained trademark rights well after Rick purchased the domain.

Some thoughts:

1. Make sure you are not at risk for a legitimate claim of cybersquatting.
2. Implement a non-infringing non-commercial use.
3. Approach a TM holder through counsel who can draft a letter showing that it is a legitimate inquiry and educating TM holder that this is not cybersquatting.
4. Obtain a written agreement up front that discussions re sale can not be used for any purposes under the UDRP, ACPA or any other law.
5. Freely explore sale without concern of legal action.

There is always some risk of a UDRP filing on step 3. But if you are not a cybersquatter in the first instance and don't provide ammunition and allow for innuendo, you would survive the UDRP and then the price of poker goes up.