Hi, I have been sent a C&D notice on one of my casinos. The domain name was registered before the trademark was setup. However the domain name had no content on it when the trademark was set up. What are the chances of me winning a dispute. I'm only interested in the opinions of people who have dealt with these issues.
C&D Notice On Domain Name Predating Trademark
- Jun 20, 2013
- 11,506
- 8,918
I don't have any clue, But you are going to win it.
If you had a domain before they registered the trademark, I feel to see how they can do anything, unless you are purporting to be connected to them / part of their brand.
So if you are passing yourself off as them and they can prove you are damaging some how their business / brand they might have a case.
The easiest way is a disclaimer on your site.
So if you are passing yourself off as them and they can prove you are damaging some how their business / brand they might have a case.
The easiest way is a disclaimer on your site.
tightmetrics
Junior Member
- Sep 28, 2018
- 106
- 32
I worry about this, because they can go to the registrar, and failing that, ICANN to make a case for taking the domain. I've seen this happen and while fairly uncommon, they can and might do it.
OP, I think you need to nip this in the bud and maybe open a support ticket of your own with your registrar, or move to a registrar which takes no bullshit from people like njal.la.
ritafairclough
Senior Member
- Apr 7, 2009
- 1,131
- 641
If it's trademarked and you are passing your site as the trademark or similar you will lose.
Dates don't matter. This is my experience in the UK.
Dates don't matter. This is my experience in the UK.
Wilson Grant Fisk
Elite Member
- Nov 10, 2012
- 15,677
- 46,847
https://www.google.com/search?q=retroactive+trademark
https://www.google.com/search?q=retroactive+domain+name
Old article here, not sure how much the law has changed
https://moz.com/blog/trademark-law-and-domain-names-acpa-or-udrp
https://www.google.com/search?q=retroactive+domain+name
Old article here, not sure how much the law has changed
https://moz.com/blog/trademark-law-and-domain-names-acpa-or-udrp
- Apr 25, 2011
- 19,849
- 28,315
I agree with Misterf as long as you’re not trying to make money using their brand, or pass your site off as being associated with them, it should be ok.
I think the main relevance of you having registered your domain before their copyright existed would be that it re-enforces the arguenent that you are not using their brand to your advantage as you could argue that the domain was part of your business model before their brand existed / had any clout or relevance.
Having said that, if the registrar are on the side of caution and shut your domain down, you won’t have much choice.
I think the main relevance of you having registered your domain before their copyright existed would be that it re-enforces the arguenent that you are not using their brand to your advantage as you could argue that the domain was part of your business model before their brand existed / had any clout or relevance.
Having said that, if the registrar are on the side of caution and shut your domain down, you won’t have much choice.
D
Deleted member 36594
Guest
3 Questions.
1) Is the word they claim you're infringing a generic word?
2) Are you and the complainant residing in the same country?
3) If matters do escalate, are you willing to hire a lawyer to fight for your cause?
You may want to read this:
https://forums.digitalpoint.com/threads/udrp-claim-domain-registered-before-trademark-filed.1540208/
There are 2 possibilities that will happen now:
1) they can sue you for infringing on their trademark, but not for cybersquatting as you didn't fulfil the 'criteria' of being one. You will be asked to attend court. If you're living from a different country than the complainant, then you can ignore them. But if you're living in the same country with the complainant, then you will need a lawyer, one who specialises trademark laws, to defend you in court (even if you've said that you registered the domain name before the trademark was filed).
2) They will file a UDRP with WIPO. The complainant will file a UDRP with WIPO (I think it costs $500-1500 depending on where they file it. Any additional judges/panellist will incur a price and it will be split between you, the defendant, and the complainant.) and you will be asked to respond within a certain amount of days as the 'case' will be reviewed by a judge to decide the outcome. You can submit a defendant reply yourself but many would advise you from doing so. And if you do get a lawyer, you must find one who specialises in cyber law. You could even request for multiple panel judges to decide the outcome (1 to 2, 3 or even 5... I remember it can be numerous). The panellists will read your case and vote on the outcome.
That is why you should ask yourself is it worth it to fight for it, especially since you've not put up any content and not monetising at the moment.
What I worry most is if they wants to bring you to court for trademark infringement... and say you lost the case (touch wood) you will be fined heavily and have to surrender the domain name. However, like you've pointed out, you registered the domain name BEFORE the trademark was filed. Again, you will need a lawyer to defend you in court and that means $$$. If they only file a UDRP, the most you will lose is the domain name and pay your registrar a small fee, and I believe you're pretty much safe then.
EDIT: Oh wait, seems like there's a change of law: https://trademarkwell.com/no-you-cant-get-a-registered-domain-name-by-registering-a-trademark-now/
If you're daring enough, you can reply back to them and quote all these laws that others and me have posted. Tell them that they've no grounds to sue you since you've registered the domain name before the trademark was filed. Then, if they concede defeat, you could tell them they can buy your domain name at a 'reasonable' price if they want.
1) Is the word they claim you're infringing a generic word?
2) Are you and the complainant residing in the same country?
3) If matters do escalate, are you willing to hire a lawyer to fight for your cause?
You may want to read this:
https://forums.digitalpoint.com/threads/udrp-claim-domain-registered-before-trademark-filed.1540208/
There are 2 possibilities that will happen now:
1) they can sue you for infringing on their trademark, but not for cybersquatting as you didn't fulfil the 'criteria' of being one. You will be asked to attend court. If you're living from a different country than the complainant, then you can ignore them. But if you're living in the same country with the complainant, then you will need a lawyer, one who specialises trademark laws, to defend you in court (even if you've said that you registered the domain name before the trademark was filed).
2) They will file a UDRP with WIPO. The complainant will file a UDRP with WIPO (I think it costs $500-1500 depending on where they file it. Any additional judges/panellist will incur a price and it will be split between you, the defendant, and the complainant.) and you will be asked to respond within a certain amount of days as the 'case' will be reviewed by a judge to decide the outcome. You can submit a defendant reply yourself but many would advise you from doing so. And if you do get a lawyer, you must find one who specialises in cyber law. You could even request for multiple panel judges to decide the outcome (1 to 2, 3 or even 5... I remember it can be numerous). The panellists will read your case and vote on the outcome.
That is why you should ask yourself is it worth it to fight for it, especially since you've not put up any content and not monetising at the moment.
What I worry most is if they wants to bring you to court for trademark infringement... and say you lost the case (touch wood) you will be fined heavily and have to surrender the domain name. However, like you've pointed out, you registered the domain name BEFORE the trademark was filed. Again, you will need a lawyer to defend you in court and that means $$$. If they only file a UDRP, the most you will lose is the domain name and pay your registrar a small fee, and I believe you're pretty much safe then.
EDIT: Oh wait, seems like there's a change of law: https://trademarkwell.com/no-you-cant-get-a-registered-domain-name-by-registering-a-trademark-now/
If you're daring enough, you can reply back to them and quote all these laws that others and me have posted. Tell them that they've no grounds to sue you since you've registered the domain name before the trademark was filed. Then, if they concede defeat, you could tell them they can buy your domain name at a 'reasonable' price if they want.
Last edited by a moderator:
BobJustBob
Junior Member
- Dec 3, 2016
- 168
- 63
You need a lawyer on your side. Trust me, otherwise you will lose. I lost a dispute which was pretty solid for me to win, i didnt get a lawyer on my side and i lost the wipo case.
- Sep 25, 2013
- 4,705
- 2,701
I feel like it doesnt matter the moment they trademark it youre done for.
I have recently gotten these notices as well just yesterday and a lot of users here havr reported the same not sure whats going on.
I wonder if you just mention in the footer + terms of srrvice + privacy policy that you have nothing to do with the brand if you'll be able to win the case.
- Sep 25, 2013
- 4,705
- 2,701
I feel like it doesnt matter the moment they trademark it youre done for.
I have recently gotten these notices as well just yesterday and a lot of users here havr reported the same not sure whats going on.
I wonder if you just mention in the footer + terms of srrvice + privacy policy that you have nothing to do with the brand if you'll be able to win the case.
Mr Dingle
Regular Member
- Sep 22, 2012
- 342
- 223
A lot depends on the laws of the particular country. Some have a "First to register" rule, while others have "first to use"
It could well be that you could actually be suing them. Now that would be sweet!
Regardless: I'm sure the charismatic charm you demonstrate on this forum will win the day
Good luck
It could well be that you could actually be suing them. Now that would be sweet!
Regardless: I'm sure the charismatic charm you demonstrate on this forum will win the day
Good luck
LOL I don't know why scruffy cunts try this shit on. As though he's just going to walk with my business and that is it. Big fucking mistake. He'll be paying for it till the day the internet closes.
There is actually more to this case. The sad bastard tried to buy my domain name. When I did not sell. The cheeky cunt trademarked it, to try and take it by force. I'm sure his chances in court range from nothing to fuck all.
There is actually more to this case. The sad bastard tried to buy my domain name. When I did not sell. The cheeky cunt trademarked it, to try and take it by force. I'm sure his chances in court range from nothing to fuck all.
EternalFun
Supreme Member
- Sep 4, 2018
- 1,212
- 248
How much did he want to pay? Did you try and ask him around 4 or 5 figures?
Yeah lawyers are a costly option. I hope he has the budget to keep paying his lawyers to respond to my free emails. I very much fucking doubt it. Cunt looks like he lives in a caravan park.
ridersark
Supreme Member
- Nov 14, 2015
- 1,271
- 581
Just wanted to know what you intend to do with that particular domain? Do you have any plans for that?
I have a casino on the domain name.
