Using the trademark-domain dispute system for good?
March 24, 2013 9:57 AM   Subscribe

We're setting up a new business and plan to register a trademark which has been abandoned in the US and is dead in other trademark jurisdictions, too. Way back when the original user of the name was active, they registered (domain).com for the absolute maximum number of years. It is up for renewal next year, but...

...the tricky part. The domain is now owned by Marchex. It seems they won't let domains go for less than tens (or hundreds) of thousands of dollars. If we re-register the trademark successfully, is it worth using ICANN's uniform name dispute policy to improve our negotiating position to get our hands on

This new company is very small and being bootstrapped from my own pocket, so keeping costs as low as possible is critical. I'm afraid that if we send an IP lawyer in to negotiate for the domain before the trademark is securely registered we could tip our hand and really screw ourselves over.

I have no problem compensating them for the domain, but this domain is not worth hundreds of thousands of dollars, that's totally crazy.

Any other ideas for how to work this? Thanks in advance, hive mind!
posted by anonymous to Computers & Internet (4 answers total)
You should probably talk to an trademark lawyer about this. Not to negotiate with the domain owner, but to get advice on your trademark -> domain dispute scheme.
posted by ryanrs at 11:12 AM on March 24, 2013

This is the sort of question that an IP lawyer can help you answer. Consulting with a lawyer doesn't necessarily entail having him/her contact anyone elseā€”to negotiate, to sue, etc. It's perfectly common to hire a lawyer just to answer questions as you set up your business, and a good IP lawyer can help you strategize this issue.

I don't feel comfortable giving you ideas because your question is fairly specific, and so a more detailed answer would veer inappropriately into giving you legal advice. (I'm a lawyer, but not yours.) Good luck with your new business.
posted by cribcage at 11:20 AM on March 24, 2013

Yep, this is exactly what an IP lawyer can (and should) help with. I work with a few lawyers who specialize in domain names, MeMail me if you'd like their names. Good luck with your new business!
posted by third word on a random page at 3:00 PM on March 24, 2013

I am trademark lawyer. I am not your trademark lawyer. This question comes up often.

A successful UDRP requires the complainant to prove bad faith registration and bad faith use - that is, registration and use with knowledge of (constructive or actual), and to the detriment of, the complainant's trademark rights. If the current owner registered the domain before the complainant established its trademark rights, and is using it for some legitimate purpose, it's virtually impossible to establish bad faith.

MeMail me if you want to discuss further.
posted by schoolgirl report at 6:13 PM on March 24, 2013

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