Domains and trademark issues
When my company first got setup and registered domains, we were unable to get the .com of our company name, as it was already registered. We have all of the other top level domains for our name though, but we're finding more and more that we really need to have the .com of our name. We have trademarked our brand, and our company name, and have been using the TM markup on all of our media relating to our brand.
My question is, what recourse do we have as trademark owners to gain ownership of the .com domain. I have been trying to get into contact with the owner of the domain for several months, by mail, phone, and email, and have not gotten any reply, so there is obviously no chance for us to purchase the domain (Even if we did have the money for it).
How do I start this process? I have an IP attorney, but if I can avoid paying him $250 an hour to send emails and make phone calls I'd prefer to do it myself.
Thanks
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how long have they had it and what are they using it for? You're probably out of luck. Just because you came along with a name does not give you rights to take it – Tim J 12 years ago
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They have had it since May 2004, but it's parked, and has no content on it. There is no one using our name, which is why we were able to get a wordmark, as well as a trademark. There's never been anything on the site either from what my research tells me. Since there is no content, they don't have an argument for prior use of a trademark in this case, from my understanding of the law. Had they have had other things on it, I could understand. – Bwasson 12 years ago
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Most likely you only have a trademark for a specific business use. As long as they aren't causing confusion or harm to your mark then you have no basis for any claim. – Tim J 12 years ago
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The only thing I can think of in our favor I guess is that the park page isn't offering sale, just says "Coming soon, Truves Software" But it's been like that since 2004. And since we're a software company. we might have some claim. – Bwasson 12 years ago
3 Answers
If the owner did not respond you have no chance to get the domain.
From Domain / Trademark
Lawyer can't help if: 1) The domain is registered before you trademarked you phrase 2) Or not used in a way that false represents that this is your business 3) It is a hard battle that you most probably will not win. - Just look the posts at DNForum on similar cases. If the domain is parked you have zero chance of winning.
Remember that if someone else was using the name before you then they have a prior claim on the name and may legally continue to use it (USA). Your best bet is to either negotiate with them or wait for the domain name to expire at which point you can purchase it.
As background, there is a hamburger place in Illinois called "Burger King". They existed before the big national chain. It went to federal court and they have exclusive rights in one county of Illinois (in which the national chain can not have a franchise) but nowhere else.
Assuming you are in the US, there are two basic approaches to this problem.
- If you have a valid trademark AND their use of the .com name infringes on your trademark, you can hire an attorney and sue them in Federal court. I know of a number of firms who have taken this approach. If the other party doesn't put up a court fight it will cost less than $5,000 and take only a few months.
- You can follow the Uniform Domain-Name Dispute-Resolution Policy. This costs a minimum of $1500 and can take quite a while.
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Neither of these approaches are available here. Owning and not using a domain name is not trademark infringement. – Kekito 12 years ago
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If you own a trademark and someone else has the domain AND they aren't using it- the lawsuit in Federal court works very well. They are extremely unlikely to answer the lawsuit. It will cost them several thousands of dollars to do so. If they don't answer the suit, they lose the domain. – Gary E 12 years ago
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Yes, that is an option, but not an ethical one. Lawyers are not supposed to file baseless lawsuits. Then again domain name hoarding isn't a very ethical business either... – Kekito 12 years ago
