Using USPTO Registered Trademarks to Transfer URL Ownership?

[rocknrollchef]

Hello:

I have three registered trademarks in the US and Canada. Someone has the exact spelling of 2 of my marks with their website URL, and they're using it to distribute infringing content (same category of content).

QUESTION: Would NameBright (registrar) cooperate with an ownership handover request if I submit the trademark documentation? And what about Hostgator.com (they host the site)?

I'm hearing I can take them to "internet court" (ICANN?), but it costs $1500 to file the motion, with of course no guarantee of outcome.

Okay let me know if any of you have been down this road, what happened, suggestions etc.

THANK YOU

chef

 

[Enserio]

Your lawyer can write a cease and desist letter to them at the hosting company where the infringing content is located even if under privacy, see what happens.

Namebright or any other good register like them can't and won't get involved with disputes as this is handled normally as a UDRP process that you should file at $4000 for 3 judges on panel with ICANN, plus legal fees.

You need to ask yourself if it's worth it, when you state $1500 like that, I wonder as this isn't much money with a good operating business. When did you file your TM and what does the TESS listing show? Do they also have TM's ? I assume your status box is "Live", paid in full, up to date, etc.

 

[ontiscal]

you will win the case for sure but someone in the world will register others domains so it will be never ending story.
I suggest you to send a simple threat email.

 

[rocknrollchef]

Your lawyer can write a cease and desist letter to them at the hosting company where the infringing content is located even if under privacy, see what happens.

Namebright or any other good register like them can't and won't get involved with disputes as this is handled normally as a UDRP process that you should file at $4000 for 3 judges on panel with ICANN, plus legal fees.

You need to ask yourself if it's worth it, when you state $1500 like that, I wonder as this isn't much money with a good operating business. When did you file your TM and what does the TESS listing show? Do they also have TM's ? I assume your status box is "Live", paid in full, up to date, etc.

Yes I'm all set with my trademark registrations (US and Canada). The infringers do not have a trademark, and multiple C & D emails to them have been ignored. The main problem is search engine results - their content is appearing next to mine, and creating confusion regarding the owner of the marks.

 

[rocknrollchef]

you will win the case for sure but someone in the world will register others domains so it will be never ending story.
I suggest you to send a simple threat email.

I've done the threat emails - no cooperation or results.

 

[rocknrollchef]

Your lawyer can write a cease and desist letter to them at the hosting company where the infringing content is located even if under privacy, see what happens.

Namebright or any other good register like them can't and won't get involved with disputes as this is handled normally as a UDRP process that you should file at $4000 for 3 judges on panel with ICANN, plus legal fees.

You need to ask yourself if it's worth it, when you state $1500 like that, I wonder as this isn't much money with a good operating business. When did you file your TM and what does the TESS listing show? Do they also have TM's ? I assume your status box is "Live", paid in full, up to date, etc.

You seem like you know the ropes a bit - do you have firsthand experience doing this? Are you an attorney? FYI one thing about owning a trademark: If you DON'T take action against infringers, it can be interpreted as abandonment of the mark in a legal action. So a mark owner doesn't really have much choice about spending time/money to protect it.

 

[Enserio]

their content is appearing next to mine, and creating confusion regarding the owner of the marks.

This confusion is one of the UDRP points that are evaluated by the UDRP panel.

You seem like you know the ropes a bit - do you have firsthand experience doing this? Are you an attorney? FYI one thing about owning a trademark: If you DON'T take action against infringers, it can be interpreted as abandonment of the mark in a legal action. So a mark owner doesn't really have much choice about spending time/money to protect it.

That sucks that the C&D's have been ignored. No, I haven't had to protect or file against others but need to protect my domains. So I have studied this subject and consulted with a well known UDRP attorney about protecting my interests and read his many responses to others in his articles.

Over the last few years, I have invested hundreds of hours to study various cases on Domain blogs, UDRPsearch and Wipo dot INT and also CircleID has articles about the procedures on copyright infringement, and cases that are not cut and dried... so there are some resources for you to also review, but you probably should just file. But first get a consultation personally to an experienced UDRP and Infringement lawyer who protects domains and knows the system.

 

[DeadJoe]

Hello:

I have three registered trademarks in the US and Canada. Someone has the exact spelling of 2 of my marks with their website URL, and they're using it to distribute infringing content (same category of content).

QUESTION: Would NameBright (registrar) cooperate with an ownership handover request if I submit the trademark documentation? And what about Hostgator.com (they host the site)?

I'm hearing I can take them to "internet court" (ICANN?), but it costs $1500 to file the motion, with of course no guarantee of outcome.

Okay let me know if any of you have been down this road, what happened, suggestions etc.

THANK YOU

chef

If they were doing it before you, and you registered the trademark AFTER they had been in business doing what they are doing right now then you can't do shit.

 

[rocknrollchef]

If they were doing it before you, and you registered the trademark AFTER they had been in business doing what they are doing right now then you can't do shit.

I'm not sure that's true, but I've been doing this long long before these jagstrokes started posting content, including having registered USPTO trademarks

 

[rocknrollchef]

This confusion is one of the UDRP points that are evaluated by the UDRP panel.

That sucks that the C&D's have been ignored. No, I haven't had to protect or file against others but need to protect my domains. So I have studied this subject and consulted with a well known UDRP attorney about protecting my interests and read his many responses to others in his articles.

Over the last few years, I have invested hundreds of hours to study various cases on Domain blogs, UDRPsearch and Wipo dot INT and also CircleID has articles about the procedures on copyright infringement, and cases that are not cut and dried... so there are some resources for you to also review, but you probably should just file. But first get a consultation personally to an experienced UDRP and Infringement lawyer who protects domains and knows the system.

Feel free to share the name of this attorney who is posting related content