Discussion:
What is the name of your state? WY, VA
Our company is incorporated in WY and we reside/work in VA. We recently obtained a trademark registration for our company name. We have a .net domain/website but the .com domain is taken by someone else for the last 5-6 years. The other party owned the .com domain even before our incorporation/trademark-registration. But the .com domain is idle and never used by the other party who lives in VA, too. Our .net and their .com domains are registered with the same domain registrar. Our company name is unique in the US and no one ever used that name before/after our registration which is why we got the trademark without any conflicts/opposition.
We contacted the other party ananymously for the .com domain with an offer to purchase it for 1k but they said they would expect 200k to part with it even after they were made aware of the existing trademark (we did not tell them we were the trademark owners). Does this tantamount to cyber-squatting? What are our options and 'chances' to acquire the .com domain from the other party legally in this situation? How should we proceed? We just don't want to make any mistakes at this stage and looking to get the domain positively without spending a fortune on it.
On another note, there is a confusingly similar .com domain that is parked with a message 'for sale' by a different owner. We are also interested in acquiring this domain to clear confusions.
Thanks,
Answer:
What is the name of your state? WY, VA
Our company is incorporated in WY and we reside/work in VA. We recently obtained a trademark registration for our company name. We have a .net domain/website but the .com domain is taken by someone else for the last 5-6 years. The other party owned the .com domain even before our incorporation/trademark-registration. But the .com domain is idle and never used by the other party who lives in VA, too. Our .net and their .com domains are registered with the same domain registrar. Our company name is unique in the US and no one ever used that name before/after our registration which is why we got the trademark without any conflicts/opposition.
We contacted the other party ananymously for the .com domain with an offer to purchase it for 1k but they said they would expect 300k to part with it even after they were made aware of the existing trademark (we did not tell them we were the trademark owners). Does this tantamount to cyber-squatting? What are our options and 'chances' to acquire the .com domain from the other party legally in this situation? How should we proceed? We just don't want to make any mistakes at this stage and looking to get the domain positively without spending a fortune on it.
On another note, there is a confusingly similar .com domain that is parked with a message 'for sale' by a different owner. We are also interested in acquiring this domain to clear confusions.
Thanks, Rather than retype the information, here's a link to a page that has a good overview of the anitcybersquatting protection act:
Answer:
Ok, we guess the UDRP is the way to go in our situation instead of an ACPA lawsuit. Here are some key-points:
The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- Identical to our mark
The domain name owner does not have any rights or legitimate interests in respect of the domain name; and
- Just an individual; page parked at the registrar for over 5 years
The domain name owner registered the domain name and is using it in "bad faith."
- Offered to sell it for 200k 20 months ago (although registered the domain even before we were incorporated)
Circumstances indicating that the domain name owner registered the domain name or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- Offered to sell the domain 20 months ago; offered to sell it for 200k
Before any notice to the domain name owner of the dispute, the domain name owner's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
- Never used the domain name in any bona fide offering of goods or services; just a default parked page with the registrar.
Now, which of the 4 providers should we choose in this situation - com domain with mark owner and domain owner in the US?
CPR Institute for Dispute Resolution
Asian Domain Name Dispute Resolution Centre - ?
The National Arbitration Forum
World Intellectual Property Organization - ?
We guess its either NAF or CPR.
Under the above circumstances, is it possible that the domain holder brings up some fake intention to use it in future as their response in the 20 days time he/she is given by the UDRP provider? If so, how do we go about proving it is fake? Or what if they incorporate a bogus business in a jiffy and setup/host a fake website offering some fake/unrelated services to circumvent the proceedings? Is their prior offer to sell the domain adequate to work against them - adversely?
How about them having registered the domain 5 years ago and we were incorporated just 2 years ago - not to mention got the trademark registration recently? We are currently using the .net domain for our business.
Should we go with a single member panel or a 3-member panel?
Appreciate your time.
Answer:
I asked 2 last questions before we go and hit this one:
1. Should we go through NAF or CPR or WIPO.
2. Should we go with a single member panel or a 3-member panel?
Please give us the answers you know - we just don't want to make any mistakes at this point. I did search the previous answers but could not find similar questions in the forum before.
Thanks in advance...
Answer:
Nobody? Well! I thought I could get answers for some simple questions on these forums.
Answer:
If they're so simple, then you answer them for yourself and go away.
Answer:
Actually, there is one simple part... The person did not specifically aquire the domain to sell to you because you did not have the trademark at the time that they aquired the domain.
Because their intent was not to aquire the domain to sell to you, then I don't believe you have the upper hand on claiming it from them. There may or may not be a reason why they are attached to this domain. In the end, you have your .net site and no one is running anything on the .com site that could be confused as your business site, so there is no one trying to steal your customers, defraud them or any of the other reasons domains get stripped away from people.
So, in the end, your questions are not simple because you aren't even calculating in the other factors that are looked at when domains are disputed.
Answer:
We understand your points which are obvious, too. Here are a couple of questions - doesn't the individual's willingness to sell it for monetary gains work against him? His not using the domain or making any preparations to use it legitimately so far work against him? Further, the parked page (on the registrar's site) displays some ad links that are conflicting with our goods and services. Doesn't this confuse our clients who would surf to the com domain (.com by default) to see the confusing links? Of course, the registrar makes money out of those ad links as the individual never hosted the site and so does not make money for himself out of the parked page.
Thanks for your time.
Answer:
What you're asking can definitely be used against the registrant. But they can also be used
against you.
It appears the registrant never made any attempt to contact you asking if you're interested
in buying the name. You made the offer (albeit anonymously), not the other way around.
A domain name's website (if any) doesn't necessarily dictate its usage. The registrant can
also show s/he intends to use the domain for a legitimate business in the near future, and
there's really no requirement for the registrant to change the DNS anytime or even put up
any active website at all.
Your risk here is you might be shown to have engaged in "reverse domain name hijacking".
UDRP panelists strike down such attempts harshly, and that's like a permanent blackeye.
Of course, no one really knows what's going to happen until you go through it.
IANAL. Just one who happens to be passionately studying about this, but I've worked in the
domain registration business and encountered this very often.