trademark vs. my domain name

October 30, 2008 3:08 PM

I think a company is trying to do an end-around to get my domain name, what can I do about it?

I have a domain name that another company wants. They used to have a different name, but now they've registered the trademark.

A few years ago I started to get occasional emails from someone asking about one of my domain names. I always had plans (not so well fleshed out) and didn't want to let it go. I never entertained selling it, never mentioned money or any bad-faith things like that. I did some Googling and found out about the company with the slightly-different name (think "Bob's X" where now they're dropping the "Bob's") existing in another part of the country (USA).

Today I received an email from UPS about a package that was going to be delivered to the city I had found before, using an email address at this domain. I did a search at USPTO and found that they had received (I think) the trademark about six months ago.

The frustrating thing is that I had explored getting the trademark based on my plans, even talking to a lawyer, but not following through. I'll likely be talking to this lawyer later, but I want to probe the hive.

posted by rhizome to law & government (8 comments total)

The email for the package could've been done by an employee who didn't understand what their domain is. I get 4-5 emails a day to my email that are the result of someone not knowing what their email address is.
posted by scabrous at 3:24 PM on October 30, 2008

I am not a lawyer, but I had a similar experience, and here's what I learned.

First, DO NOT contact or respond to anything from Bob's X.
Second, save a copy of the email from whoever it was at Bob's X that wanted to buy your domain.

Trademarks and domain names are related, but they aren't always linked--for example, see amazon.net and amazon.org. If you own "Hoopdeedoo.com" and Bob's X decides to rename themselves Hoopdeedoo, or Hoopdeedoo.com, that doesn't mean you must automatically hand over your domain name.

Much of what happens will depend on whether Bob's X can make the case you registered the domain names in bad faith--that is, if you registered the domain names with the intent to sell them back to Bob's X. In your case, since you purchased the domain name before Bob's X renamed itself, they're not going to be able to prove you registered the domain in bad faith. Further, if they offered to buy it and you declined, that's more proof you didn't register it in bad faith.

Check to see if Bob's X has filed anything yet under the Uniform Dispute Resolution Process (UDRP) with the domain name authority, ICANN. If they did, you'll see something here.

My guess is that they'll try to do one of three things:
a. scare you into giving it to them,
b. start a negotiation, or
c. create a history to show they tried "in good faith" to negotiate.

If Bob's X wanted to actually force you to give the name, they'd file it with UDRP. I believe they're hoping to do it on the cheap because:
a. they think you won't recognize/don't know your rights, or
b. they want to get this done amicably and quickly.

If they decide to push this, you will likely have to go though the
proceeding, depending on two things:
a. What you're currently doing with the domain name,
b. Because there is the argument that you might be squatting (due to "a"). See these applicable disputes.

According to the rules, they cannot hold you for bad faith. See, "Evidence
of Registration and Use in Bad Faith" at the above URL.

I also believe you can show legitimate right (see "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint" at the above URL) without much difficulty.

Ultimately, it comes down to time and money, and how much you and Bob's X are willing to spend on lawyers, but in all likelihood, Bob's X would eventually back down or lose this in the UDRP (Uniform Dispute Resolution Policy). You could fight this thing to a standstill and be exactly where you are today, or you could sell them a promise that you won't use it for competitive purposes, or lease them the redirect--but you would need a lawyer for those two options.

In my case, I contacted the EFF, and friends who put me in touch with lawyers who specialized in trademark disputes and domain names. I also recommend reading Rogers Cadenhead's story about his "Wargames" domain name--his is a similar story, and his article has a lot of excellent advice.

Feel free to contact me if you'd like me to recommend a lawyer. Good luck.
posted by mattdidthat at 5:23 PM on October 30, 2008 [6 favorites]

What is the question, exactly?

What can you do about another company registering a trademark that coincides with a domain name you're not using? Not a damn thing.

It doesn't sound to me like they're even doing anything to try to get it from you. As mentioned above, if they were trying to force you into selling they'd go through the UDRP or maybe even the traditional court system. It's not going to start by them sending you emails about packages.

It's unclear what issue you're actually even trying to resolve. To me it sounds like everything's as it should be.
posted by toomuchpete at 5:32 PM on October 30, 2008

My intent for the domain name (and there is a blog up on it right now with just a few entries) absolutely coincides with their business. My "X" blog that Bob's X has expressed interest in is intended to be all about X, including (in my dreams) manufacturing and retailing X. Now, it's not "X" like "automobiles" or "furniture," it's more like "Bob's Cookster" is a BBQ Supply store, and me having cookster.com wanting to write about cooking supplies, perhaps creating my own cooking tools, and selling all of the above from the site.

A good friend of mine works at a large Patent and Trademark law office, so I'm waiting to hear back from one of his coworkers (who was going to help me with the trademark a couple of years ago). I guess my question forks into mattdidthat's comment above (personal anecdotes and pitfall avoidance) and timing issues that would likely be better dealt with by a trademark prosecutor (i.e. whether I could turn this around into getting the trademark).
posted by rhizome at 6:19 PM on October 30, 2008

I can't speak to the issues of whether you would have any case of getting their trademark or they would have any case of getting your domain, but I'd note that there isn't really much of a case in the situation described that they are after the domain at all. If you want X to be your brand identity, registering the trademark is frankly a more important move than possessing the most desirable X-dot domain. And if your company is called X but your domain is Xtypedeal.com, it wouldn't be a particularly surprising error for some drone to put an email @X.com on a UPS slip. Doesn't mean they're not after it, of course, there just doesn't seem to be any particular evidence that they are.
posted by nanojath at 9:32 PM on October 30, 2008

honestly, if the issue is important to you, you shouldn't wait for your buddy's co-worker to get back to you. Just hire an attorney and see what you can do.
posted by b_thinky at 2:26 AM on October 31, 2008

All good points. I'm just trying to arm myself with as many contingencies and questions to ask as possible. Sure, at the end of the day the lawyer will be able to lay down the law with me and tell me that in fact there are one, two or no options available to me and that it's just a matter of time.
posted by rhizome at 12:57 PM on October 31, 2008

Just a follow up, nothing has happened so far. I'm job-hunting right now, so once that happens I'll be paying for the lawyer to either contest the registration, register with a subset of claims (or whatever they're called, the categories), or something else. At the end of the day, the email I received has been the only thing so far and I haven't heard anything more since this question was posted, so I can't provide anything but my anecdote to future readers. If something happens before comments are locked here, I'll update.
posted by rhizome at 2:07 PM on December 8, 2008