1. This site uses cookies. By continuing to use this site, you are agreeing to our use of cookies. Learn More.

Domain and Trademark Questions

Discussion in 'BlackHat Lounge' started by SaraJ, Jan 1, 2012.

  1. SaraJ

    SaraJ Junior Member

    Joined:
    Jun 11, 2010
    Messages:
    172
    Likes Received:
    71
    I understand that none of what I get here from the forum is legal advice but I do have an interesting question concerning domain names and trademarks and wonder if anyone can help me out.

    I purchased a domain name on October 1, 2011 and created a website. The site was about a local topic that grew in popularity quickly where I got around 2000 visitors per day. Everything was going great until this morning.

    I get a letter in the mail which is a cease and desist notice about the domain name. A group of individuals filed for a trademark on my EXACT domain name a week ago and the lawyers have contacted me charging me in violation of trademark.

    I was the first to get the domain or use the 2 words together. There are no records of any company, group, or even exact matches online for these 2 words on Google prior to me making it up on October 1, 2011.

    What do I do?

    I feel it's my creation and someone is abusing the concept of trademark trying to seize a domain that should be mine as I created it.

    What would you guys do?
    Has anyone been in this situation before?
    Can you lose a domain to trademark if the trademark is created after the domain is purchased?
     
  2. SaraJ

    SaraJ Junior Member

    Joined:
    Jun 11, 2010
    Messages:
    172
    Likes Received:
    71
    I have a couple days to get this figured out. If anyone has suggestions that would be great.
     
  3. m3ownz

    m3ownz Regular Member

    Joined:
    Dec 12, 2009
    Messages:
    311
    Likes Received:
    135
    I would be tempted to tell them to get lost - it seems unlikely they could enforce but i do not know the actual legal standing on this.

    I mean, there are some great premium names that could probably be trademarked, so i would have thought this would have been abused to death if its possible.

    Are you sure this is even real, and not a scam?

    Is this actually making you any money? If not, may no be worth the hassel.
     
  4. SaraJ

    SaraJ Junior Member

    Joined:
    Jun 11, 2010
    Messages:
    172
    Likes Received:
    71
    It is real. It is a filed trademark as of a few days before I received the notice.

    I do think that if this is the legal process that taking control of any website on the internet that wasn't trademarked would be abused consistently.

    I'm not sure what to do.

    I feel it's an unfair situation but also feel my hands are a bit tied at the same time.
     
  5. Roparadise

    Roparadise BANNED BANNED

    Joined:
    May 25, 2011
    Messages:
    786
    Likes Received:
    1,417
    1. Go to yellowpages.com and look for lawyers in your area
    2. Call them and set up an appoitment.
     
  6. jdog37

    jdog37 Power Member

    Joined:
    Apr 3, 2009
    Messages:
    510
    Likes Received:
    569
    Occupation:
    unemployed electrician
    Location:
    virginia
    As Roparadise said... Consult with a lawyer or 2 or 3. Especially if you are making money with the site.

    Even though you registered the domain before they got the trademark. There are several things that could go for or against you.

    I would suggest that you do some research online and find out as much as you can about domains and trademarks before talking to the lawyer. Go in as educated as possible about the subject.

    Ask the lawyer as many questions as you can and see if they know what their talking about. Cause in my experience most of them don't give a shit about nothing but the paycheck.

    Good luck and keep us informed about how it goes.
     
  7. imlol

    imlol Regular Member

    Joined:
    Apr 21, 2010
    Messages:
    318
    Likes Received:
    464
    Location:
    USA
    Ask for proof that they own the trademark. If they have just applied they are not allowed to take your domain.
     
  8. oscarmike

    oscarmike Regular Member

    Joined:
    Sep 16, 2011
    Messages:
    237
    Likes Received:
    44
    dont just get any lawyer; get a lawyer specializing in Intellectual properties and trademark laws. :)
     
  9. SaraJ

    SaraJ Junior Member

    Joined:
    Jun 11, 2010
    Messages:
    172
    Likes Received:
    71
    I talked with a lawyer. I was told that most likely I would be fine to simply ignore it even though it's a legitimate trademark. He said the simple fact I had the site around for months before the trademark was registered proves my side of the case.

    I do feel a bit uncomfortable knowing it could go to court though. The joys of all this.........
     
  10. jr_sci

    jr_sci Senior Member

    Joined:
    Jan 30, 2010
    Messages:
    857
    Likes Received:
    686
    Occupation:
    CTO at Tiny Piglet Publishing, Bestselling Author
    Home Page:
  11. Danny1111

    Danny1111 Elite Member

    Joined:
    Jul 5, 2011
    Messages:
    2,096
    Likes Received:
    2,480
    I would actually sue them

    you registered the domain - and now they walk in and file a trademark against your property ? after you had already taken action

    I doubt they have a leg to stand on to be honest.
     
  12. Corrupt

    Corrupt BANNED BANNED

    Joined:
    Sep 15, 2011
    Messages:
    805
    Likes Received:
    412
    If you have money to spare, countersue them. You just might get something from it.

    You have the name registered BEFORE they had the trademark, now they are suing you, even though you had it first? You have no obligation to give up the domain. Talk to a lawyer, they'll convince you that you do not, in fact, have to give up your domain and can continue running it even if they keep the trademark, and have no legal obligation to listen to their cease and desist.

    Even if they take you to the court, they have zero chance of winning.
     
  13. sunseven

    sunseven Regular Member

    Joined:
    Aug 5, 2009
    Messages:
    241
    Likes Received:
    279
    I went thru a similar situation and hired attorneys to get things situated. If you indeed owned the name prior to the date of trademark filing then you can indeed sidestep it by trademarking the domain in a different unrelated category. Takes some strategy and know how so nothing i would try without a good attorney but I have an excellent one who did something very similar. At the end of the day if they are a large enough entity they will eventually just buy you out for a nice sum once they realize they have a long hard struggle with someone who knows what their doing. PM me if you'd like the attorney I used.
     
  14. loclhero

    loclhero Supreme Member

    Joined:
    Jun 11, 2007
    Messages:
    1,453
    Likes Received:
    2,413
    Gender:
    Male
    Location:
    Copperhead Road
    This trademark question comes up over and over in here. 99% of the time it's someone who has made a website using a trademarked name in the domain and every time it happens, most of the replies are from fucktards who think just because you made up a website called facebookisthebest dot com, you can keep it. And they are always wrong.

    This case is different. You clearly have whois records showing when you purchased the domain which seems as if you have the right to it but if the owners of the mark have deep pockets or the will to push this, and it seems they do, they'll probably file against you.

    The question then becomes, how important is this to you and are you willing to fight? Maybe the lawyer you consulted with could draft a reply and tell them you'd be more than happy to either sell the domain to them or keep it and see them in court.
     
  15. MaxWeber

    MaxWeber Regular Member

    Joined:
    May 26, 2008
    Messages:
    267
    Likes Received:
    5,133
    For your reference, I advise you to look at a few case studies here.

    Code:
    http://www.udrpsearch.com/
     
  16. savvypro

    savvypro Regular Member

    Joined:
    Jan 14, 2010
    Messages:
    211
    Likes Received:
    133
    If it was me, I would contact my host and the company I registered the domain name with. To let them know the situation, to pre-empt them from possibly pulling the plug if the twats go to them.

    Going to court is not as likely as them going to ICANN to get them to steel the name from you.

    What's the time line from date of registering the domain name and the trademark application. If it's months - I would stand my ground.
     
  17. SaraJ

    SaraJ Junior Member

    Joined:
    Jun 11, 2010
    Messages:
    172
    Likes Received:
    71
    Thanks for all the replies. They are helpful.
     
  18. SaraJ

    SaraJ Junior Member

    Joined:
    Jun 11, 2010
    Messages:
    172
    Likes Received:
    71
    The timeline is that I purchased the domain on October 1st.

    They got a trademark filed near the end of December after Christmas.

    Everything was up and running for more than 13 weeks before any trademarks were pursued.