Discussion:
What is the name of your state? California
For many many years, our family business has been called "CLAYCO". In 1988 I filed a DBA under that name for my software consulting business, and worked under that name for many years.
In 1995 I registered the name "clayco.com" as my domain name, and ever since then, have been harassed by Clayco Construction Company to obtain my domain.
They are currently filed under "claycorp.com", and have been since 1995.
Over the years I have received emails and phone calls from them asking for the name, offering to buy the name, and lately (via phone) threatening to take the name. I have always refused, stating that its a family business name, and I dont want to sell.
Now it looks like their high paid attorneys have found a way to take my domain.
They have registered CLAYCO as a service mark, and I expect any day now that they will file to have my domain transferred to them.
Hard times hit my business about 3 years ago, and I was forced to go to work as an employee of another company. As an employee, I wasnt allowed do any consulting, so, as Scoutmaster, helped out the Boy Scouts by teaching them HTML and letting them use my domain to post their work for a while, but always intending to use it again for my consulting business.
All my emails, both business and personal, still go through clayco.com, as well as all my registrations for PayPal, Ebay, etc. Losing this domain will cause me a lot of hassle getting things moved over and set up again.
Now that I am only a part time employee at my work (layoffs, etc), I need to get back to my consulting business and have started using my website as such (sorry scouts).
My DBA has expired in the meantime, but it still shows as listed on my bank account. I was going to renew it, but now with their Service Mark in place, as of 4/18/06, I believe that I will be unable to renew it as CLAYCO.
It is my belief that they only registered the Service Mark to hijack my domain, as they had not filed for one in the past 10 years, but only after my final (and vocal) refusal to sell.
Can they steal my domain? What can I do to stay in business?
Answer:
What is the name of your state? California
For many many years, our family business has been called "CLAYCO". In 1988 I filed a DBA under that name for my software consulting business, and worked under that name for many years.
In 1995 I registered the name "clayco.com" as my domain name, and ever since then, have been harassed by Clayco Construction Company to obtain my domain.
They are currently filed under "claycorp.com", and have been since 1995.
Over the years I have received emails and phone calls from them asking for the name, offering to buy the name, and lately (via phone) threatening to take the name. I have always refused, stating that its a family business name, and I dont want to sell.
Now it looks like their high paid attorneys have found a way to take my domain.
They have registered CLAYCO as a service mark, and I expect any day now that they will file to have my domain transferred to them.
Hard times hit my business about 3 years ago, and I was forced to go to work as an employee of another company. As an employee, I wasnt allowed do any consulting, so, as Scoutmaster, helped out the Boy Scouts by teaching them HTML and letting them use my domain to post their work for a while, but always intending to use it again for my consulting business.
All my emails, both business and personal, still go through clayco.com, as well as all my registrations for PayPal, Ebay, etc. Losing this domain will cause me a lot of hassle getting things moved over and set up again.
Now that I am only a part time employee at my work (layoffs, etc), I need to get back to my consulting business and have started using my website as such (sorry scouts).
My DBA has expired in the meantime, but it still shows as listed on my bank account. I was going to renew it, but now with their Service Mark in place, as of 4/18/06, I believe that I will be unable to renew it as CLAYCO.
It is my belief that they only registered the Service Mark to hijack my domain, as they had not filed for one in the past 10 years, but only after my final (and vocal) refusal to sell.
Can they steal my domain? What can I do to stay in business? You might want to consider hiring a lawyer to defend your domain name. Just because you own a domain name that is the same or is similar to someone else's trademark or servicemark doesn't mean that you cannot keep your domain name. A trademark holder can only sieze your domain name if they can prove that you are either "cybersquatting" or that you are using their mark to drive traffice to your site. If you are using the domain for your own business, then they should not be able to simple take the domain.
However, it sounds like they are trying to make life difficult for you, so you might want to get a lawyer involved to fight back if you want to retain the domain name.
Answer:
That practice is called "reverse domain name hijacking":
What Is Reverse Domain Name Hijacking?
According to UDRP Rule 1, the term "Reverse Domain Name Hijacking" means "using the Policy [the UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name."
According to Rule 15(e), panels finding such bad faith are not only empowered to deny the complaint, but they are directed to affirmatively find the presence of bad faith. In relevant part, the rule states:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As you can see, these rules don't really flesh out what qualifies as a "bad faith" complaint. So, to answer the question of what makes for a bad faith UDRP complaint and what facts justify a finding of reverse domain name hijacking, we need to look at some illustrations.
According to the recent rulings, reverse domain name hijacking occurs when a complaint is brought despite knowledge that the domain name holder has a right or legitimate interest in the domain name or that the name was registered in good faith, with or without the aggravating circumstance of harassment or proven bad intent by the complainant seeking to gain the name.
Here's how reverse domain name hijacking was defined in the ruling in Goldline International, Inc. v. Gold Line:
To prevail on such a claim [of reverse domain name hijacking], Respondent must show that Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. I just looked up the USPTO and saw it's filed May 5, 2005, almost 10 years after the
domain name was registered. Tell your lawyer to tell them you're going to sue them for
lost business blah blah blah if they push thru with this.
If they need a recent "case" where someone who pulled this off lost, the mess.com UDRP
can give you ideas:
This case exhibits one of the most egregious examples of reverse domain name hijacking that any of the Panelists has thus far ever seen.
Here, the Complainant filed its 78/023,371 trademark application, on an intent-to-use basis, on August 20, 2000. This date was some 2 1/2 years after the Respondent registered the domain name on March 14, 1998, and with clear knowledge of the Respondent_s prior registration (see e-mail from Complainant to Respondent dated August 20, 2000 - that date certainly being no mere coincidence with the exact same filing date of the Complainant_s trademark application). While the Complainant claimed a first use date of December 10, 1996, for its class 41 services, the record, including the prosecution file history for the Complainant_s _MESS.COM_ Mark, is utterly devoid of any proof of use on that date. In fact, the only evidence of use which the Complainant has submitted is a December 10, 2001 press release. The Complainant also alleges a December 10, 1999 first use date for its class 42 services. This date too is after the date on which the Respondent registered the disputed domain name.
Accordingly, this Panel finds that the Complainant had no trademark rights at the time the Respondent registered the domain name, and knew it and, in spite of that knowledge, then proceeded to intentionally secure a trademark registration with an express purpose of fraudulently invoking the Policy as a means to wrest the disputed domain name from the Respondent, by an order of transfer from an administrative panel, if the Respondent_s sales price was too high (which at $25,000 it evidently was). To the Panel, this conduct constitutes a clear abuse of the Policy.
Hence, the Panel finds that the Complainant committed reverse domain name hijacking. And you're based in a state where some of the most relevant domain name disputes have
occurred.
Whatever you do, let your lawyer do the talking. Get a seasoned one who eats these things
for breakfast if you have to.