Domain and Trademark Questions

SaraJ

SaraJ

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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?
 
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I have a couple days to get this figured out. If anyone has suggestions that would be great.
 
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.
 
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.
 
1. Go to yellowpages.com and look for lawyers in your area
2. Call them and set up an appoitment.
 
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.
 
Ask for proof that they own the trademark. If they have just applied they are not allowed to take your domain.
 
dont just get any lawyer; get a lawyer specializing in Intellectual properties and trademark laws. :)
 
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.........
 
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.
 
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.
 
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.
 
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.
 
For your reference, I advise you to look at a few case studies here.

Code: 
http://www.udrpsearch.com/
 
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.
 
Thanks for all the replies. They are helpful.
 
savvypro said:
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.
Click to expand...

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.
 
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