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Hi All,.

I have a domain name, I dont wish to disclose but lets call it treemonkey.net for the sake of argument to explain my point.

Its a registered company that I own, and our ltd company name is Tree Monkey Ltd, and we also own a UK trademark for "Tree Monkey".

Another company in the USA has bought treemonkey.com and is using it through network solutions as a pay per click program, clearly benefiting from our name.

Do we have a case?.

Am I required to get the US trademark (costly because we are not based there) to take this to court?.

Can anyone provide any advice with this? We have tried contacting the company and asked nicely but been told "no" and that they have no plans to sell the domain.

Thanks in advance...

Comments (19)

I thought that Trademarks were universal - if you owned one in UK, it should withstand in the US also.

Another thing they will look at is the reg date of the .com and the .net, and also if the TM you got is newer than the .com registered, then you probably have a slim to no chance of winning...

Comment #1

You can not determine the merits of a case unless you know all the facts. Is this a TM that is clear, or something that could have more than one use.

In a UDRP the thing you are going to have to prove is bad faith.

Brad..

Comment #2

Jacob - I was under the impression trademarks were UK only from my brief (google) research they dont cover you internationally.

Bmugford - Thanks for feedback. Yes the TM is very clear in that it's for classes that relate to selling online, and specifically online advertising within a very specific industry.

But if the trademark isnt valid in the states, do I even have a case?.

Does the trademark need to predate the date when the .com was purchased, or can I buy this at any time and still have a case?.

Would really appreciate some feedback here, would be happy exchange more specifics in a PM (sorry to be so vague about the domains themselves but as you can imagine it's something confidential I dont want blurted all over the net!)..

Comment #3

Is the company operating the .COM using it in a way that.

Violates your trademark?.

Is your company well known worldwide or here in the US?.

Is your Trademark famous?.

Upon hearing your trademark name, would the average person here in the US associate your company with the TM?.

Why didn't YOU register the .COM?..

Comment #4

Trademarks is valid only in your country and you have to apply separately for the rest of the world. Let's say I have the brand XXXSOLUTION TM'ed in my country Turkey, another guy in Germany can also go and trademark XXXSOLUTION for Germany and I can do nothing about it. So there is an alternative option in country TM office, they can apply whole Europe or the whole world for a constant fee.

But Internet issue is vague, as much as I understand those UDRP cases are always resolved for backing US companies. As a UK company, you have a very slim chance. If that company TM that brand in the US, then you will have no chance...

Comment #5

Hmm..

Yes our company name is regocnised in the US as being a very large web community (whereby one revenue stream is selling advertising) we have an active US member base.

Regarding the company that has "stolen" the .com, it's own brand has nothing to do with ours, and it looks liekly they are purely squatting the domain, and clearly are making money from mistaken typos from people wanting to go to our domain on the .net.

Reason we did not buy the .com... well actually I wasnt involved in the business at the time but it looks that the US company has spotted our site and bought it up in advance by the looks of it (but it's hard to tell).

Either way, same question stands, if I was to buy a trademark in the US, would that trademark BACKDATE, in other words, even though I bought the trademark after them, would I then have a case saying that thy are basically passing off our tradename, or would the fact this tradename was bought after they owned the .com (and put a squatting page up) come in play?.

Thanks for everyones help. I really hope I can ge this sorted as it really is unfair what this company are doing...

Comment #6

It is impossible to answer many of these questions without all the facts.

However if you are talking about specifically applying for a TM to try and acquire a domain that predated yours via UDRP, that is considered reverse domain hijacking by many.

You better have a strong case if you are going that route.

Brad..

Comment #7

+++++++++++++++++++++++++++++++++++++++++++++++ You cannot backdate a trademark.

It sounds like you were late to the party and are upset all.

The beer is gone.

If the .COM owners regged the domain BEFORE you filed a trademark.

Then they have not "stolen" the domain..

What proof do you have to offer up this supposition?.

You first say their brand is different from yours then you say their infringing.

Your TM.

Which is it?.

This is smelling like a reverse domain hijacking situation.

If it is then you are the one being "unfair"...

Comment #8

You have a UK trademark, it's valid in the UK for the trademark categories you specified only. That your company developed "TreeMonkey.net" to begin with suggests that "TreeMonkey" is a good keyphrase so it's inevitable that somebody with the .com would park it. You can't backdate a trademark, it's valid from the date of application.

You have no more right to the .com than the .org owner has to your .net unless your trademarked categories are infringed in the UK or your brand is judged to be very well recognised in the US and from a legal view point you'd have to be pretty big to get that break.

I have a UK, US, EU, and Japanese trademark for the website I'm developing. I paid $1,000 for the .com, 1,000 GBP for the .net, and 2,000 GBP for the .co.uk, then another $10,000 buying 3 closely related .coms. All that and somebody still comes along and does a similar thing to what I'm doing with an "ing" on the end of my .com.

I don't think you have a case, you should focus your efforts on developing your business rather than coveting the .com. If your company wanted the .com, it should have bought it before somebody else did. Once somebody else has it, you either have to pay the troll or forget about it...

Comment #9

Of course the best advice is get a lawyer!.

As for "backdate" of a trademark, when you look at a "registered trademark", you will see something like this for "Coke": You will see similar things in other registrations, but the point is that the company began using that word/phrase/drawing etc. as a trademark in commerce on the specified First Use date. They used the name in commerce for their goods or services starting on the First Use date, and applied for a registration after using their mark in a common law sense. In this case, the mark came into existence a *long* time before the registration date.

Anyway, here is the full (latest) coke trademark for reference:..

Comment #10

There are still too many unanswered questions. I presume you registered TreeMonkey.net because the .com was already taken? If you registered TreeMonkey.net about the time you applied for your Trademark, and TreeMonkey.com was already taken (for how many years does it's existance preceed your Trademark?). Your TM would be recognized by the UDRP tribunal. But you have to prove bad faith, and they have to be currently in violation of your trademark. Generally, domains issued before the TM don't get UDRP'd very often. But your best advice would be to ask a lawyer where you stand. I'm not a lawyer...

Comment #11

Jason,.

This is how I understand it:.

If you had a trademark and it was not for a generic word like "fish" or "home", which believe it or not can be TM'd in some cases, and is very "proper", meaning invented, like "TreeMonkey", AND the other party registered the .com after you had your UK TM, AND you can show that your TM name was already popular and well known in the U.S.....THEN you have a chance, even without a U.S. trademark since your TM would have already gained some measure of common usage thus affording you "common law" usage which can predate the registration date of your TM. Your TM MUST have been well known in the U.S. to take on the .com. Your TM would have taken on "secondary meaning", meaning TreeMonkey referring to selling "cars", for example, so that when the average American hears TreeMonkey they think of "cars". At this point, with this type of recognition existing the exact moment TreeMonkey.com was registered......you could still get it back making a case that the other party "registered it in bad faith".

The reason is that the U.S. company conceivably should have known about your mark, AND is obligated to do a search for conflicting TM's before registration........since it is in the ICANN terms of registration which all registrars must adhere to that registrants must do their due diligence to make sure they are not impeding on other's rights. But, even without the U.S. TM.......they should have known, that is if you have developed "secondary meaning".

If the domain is a common word.....then forget it most likely.....unless you think you can convince a panel that a word like "fish" is synonymous with selling "jeans". If the domain in question is obviously unique and meet the criteria mentioned above...then you have a chance in UDRP process.

Also, another big issue is how they used/are using it. Are they selling your products, a competitors, etc...... In this case you say they are though the PPC links. However, you say through "Network Solutions", but the only problem with that is that NetSol does not have a parking program for domain owners......so it is likely that NetSol is profiting off of your TM. If that is the case I would complain to them. What is the difference between NetSol doing it and a cyber squatter? Absolutely nothing......both are wrong.

No matter what though.......through a UDRP panel proceeding you will have to prove that the domain was "registered in bad faith AND is being used it bad faith". If you fail to prove both then you will lose.

There was a case here recently with someone trying to get a .com domain and they had a TM in Europe, but the UDRP panel found against them b/c they said the TM was not well known in the U.S. Your TM will need to have some instant recognition here in the States for your case to work I suspect.

However, consult a lawyer. I like this guy.....Zak Muskovitch out of Toronto. Nice guy. He's also easy to talk to and reach. http://www.dnattorney.com/about.shtml.

...

Comment #12

I think I know what your .net is, it was registered on 3 April 2007, you also own the .co.uk which was regged on 5 September 05, the .com was regged in the US on 4 October 2000. You don't appear to have a UK trademark based on a search of patent.gov.uk so I think your actual question is if I get a UK trademark, does that give me dibs on the .com, and the answer is probably no. You would have to prove that somebody bought the .com in bad faith. The last WHOIS update for the .com is 4 April 2007 and the site has ads that would infringe your trademark if you had one, so it's not impossible but I think it would be tricky. Did ownership of the .com change on 4 Aptil 2007 or was it the original owner updating their address, telephone, or fax details?..

Comment #13

Alright, I figured out the domain in question. Your case is not outrageous, but I don't think you have a prayer at winning a UDRP.

It would be really hard to prove they are infringing on your TM (if you even have one).

This is not a made up word like Pepsi or something. It is basically a generic TwoWord.com registered before your domain.

This is very similar to a discussion a few months ago about the domain PrintLinks.com (search the forum). The person said BuyDomains.com was squatting even though they owned the .COM years before he got a TM. He threatened legal action, but of course nothing happened.

My advice would be to approach the owner and make a reasonable offer. The domain is not so amazing that the price should be more than a filing fee for a dispute. If they don't want to sell the domain I am not sure what you can do. I think a dispute is a waste of money.

Brad..

Comment #14

No offense but it sounds like you want to do a little reverse domain hijacking on the .com owner.

If he registered his .com before you registered your TM, then I would think you have no leg to stand on, but I am not a lawyer so don't take that as legal advice...

Comment #15

I am a bit confused, are you saying someone bought the .com or do you mean that someone reged it. If the registration of the .com was before your TM then the only way you have a chance is if someone bought the .com from someone else after your TM was registered...

Comment #16

You have a case if .com's serving your product ads even if .com is older than your TM date..

You have a case if .com's serving your ads and your site is REALLY popular and known globally....

You may have a case if .com owner contacted you first to sell the domain..

You may or may not have a case if you contacted .com owner and he/she replied with price.

Sorry, but, seems like none of the above for you...

Comment #17

I think sone great tips is here&You; can get more help to choose domain name by domain appraisal tool...

Comment #18

This gets said on here a lot, but I've yet to see an actual case where someone lost a domain based on this...

Comment #19


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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