Is it possible to get the .com version of my domain by filing a WIPO dispute?

[kendychen]

I have a famous .org domain which was registered in Mar, 2005 and being used since the registration. It's now a famous name in it's niche (PR6, Alexa rank at around 5,000).

The .com version of this name is registered in Jul, 2005.

The problem is I just started trademark application in 2010. I wonder after the trademark application is approved, do I still have a chance to get the .com version of this domain back?

Thanks in advance.

 

[DN BROKER]

I have a famous .org domain which was registered in Mar, 2005 and being used since the registration. It's now a famous name in it's niche (PR6, Alexa rank at around 5,000).

The .com version of this name is registered in Jul, 2005.

The problem is I just started trademark application in 2010. I wonder after the trademark application is approved, do I still have a chance to get the .com version of this domain back?

Thanks in advance.

You are what we call a Reverse HiJacker - I hope you loose if you go this route.

 

[Cartoonz]

get it "back"?

You registered the .org and not the .com.

Now you think you somehow have superior rights?

That's hilarious.

A

 

[DN BROKER]

Its Jerks like him who think they can use their wallet to hijack our domains.

 

[urlurl]

no you can't

 

[grcorp]

Don't consider this to be legal advice.

Your active use of the .org as a legitimate site for whatever your endeavors are should give you some sort of right to the term, as it was a mark used to strengthen your brand.

As the .com was registered afterwards, one can only believe that the registrant was doing so to keep it out of your hands. They may have had other reasons, but what I said is quite well possible.

What I feel could win you the case would be if you can prove the current owner is using the name in "bad faith". If they are just holding it to keep it out of your hands, you have a higher likelihood of getting it out of them than if they were running something legitimate on it.

If you are losing type-in traffic to the .com, then that could also be grounds to claim rights to the name.

Just because WIPO creates a living hell for everybody, here's what I would recommend you do...

Try and use a buyer broker to buy the name from them. All things said and done, you're going to spend money at some point. WIPO will cost you $x,xxx just to start, and will be quite strenuous to go through with. By offering the guy $200, $500, etc., you save what you would have spent on WIPO and the owner gets a few bucks out of it, which was probably his ultimate goal by registering the name in the first place.

By using the buyer broker, you don't run the risk of identifying yourself to the owner.

Should that not work out, sending a cease and desist letter via certified mail should get it into his hands (should he sign for it - which he has no reason not to).

You might even want to try putting in something like "If I do not receive a response by (date), I will take that as confirmation that you will push the domain name to my account. Here are my account details..." so that he has to engage in a dialog with you if he wants any hope of keeping the name. After all, he did sign for the letter... so he must have read it and understood it, and his subsequent action should be in accordance with his intentions. If he didn't understand what you wrote for him, that would make him illiterate and unable to enter into the contract involved with registering the domain name in the first place.

Last resort would be to actually seek legal counsel and perhaps have them follow up with the owner threatening to take them to WIPO, and then following through with your threat if they call your bluff.

Trademark law is a dirty game which is why I take no part in anything involving it.

Wish you the best of luck in straightening this out.

Again, to anybody reading this, do not consider this to be legal advice. I'm not a lawyer, not a member of any bar. Just speaking my opinion.

 

[urlurl]

Im not a lawyer (it would be great to get a lawyers view on this thread) but i think you would have a hard time getting it going that route - just offer the owner a fair amount for the name and see what happens. It may cheaper and less stressful that way.

 

[grcorp]

just offer the owner a fair amount for the name and see what happens. It may cheaper and less stressful that way.

It also fulfills the owner's original goal of making a quick buck, so it's a real win-win, saves everybody some trouble, and best of all, doesn't get the domain name published on the WIPO cases, giving it negative press.

 

[Cartoonz]

uhh... the question begs...

If the .com was available to register 4 months after the .org... why did the OP not bother to register it then?

To conclude that the registrant of the .com used the existence ( for less than 4 months) of the .org as the sole reason for registration is a stretch, at best.


grcorp- your assumptions are absurd. We do not even know what the domain is... for all we know it could be something as generic as "used boats"... concluding that someone registered a superior extension AFTER the .org was registered with the only possible reason for said registration being the existence of the .org is ridiculous. There is not enough information to support such a statement.

Is the domain a completely made up word/term or merely descriptive?

Was it obviously famous in July of 2005?

Did Unicorns fly by a rainbow in someone's dreams around July 2005 and shout out the .com version of the domain into someone's self conscious?

That's right... you don't know. So you cannot support your position with the facts given at all.

 

[Raider]

Why do you feel you have a case to file a WIPO dispute in the first place?

Is the dot com holder infringing on your product or service?

If not, I'm sure you'll have no problem finding a Lawyer to Reverse-Hijack the domain for you.... Maybe you can contact the Lawyers who worked on the Angels.com and Nissan.com cases, they have plenty of experience in this area.

 

[katherine]

One point to consider: is the .com being used in a way that infringes on the .org ?
Otherwise, it looks like a reverse hijacking attempt that's bound to fail.

 

[Fearless]

Another scumbag thief.

 

[hawkeye]

If it wasn't that important to reg the (implied 'available') .com, that you took the .org first instead, what's the need/importance of having it now?

 

[Dave Zan]

OP, nothing really to add here other than what the others have said. Just because the .org you have eventually
became "famous" or so doesn't necessarily mean you have a claim towards the .com name-sake.

It's somewhat...somewhat understandable if you registered the .org mainly for a non-profit org. It's just too bad
there wasn't any foresight to register the .com too.

Try to buy it from the owner instead. It may feel painful immediately, but it can be a win-win for all parties as
mentioned earlier.

Otherwise, good luck trying to grab it via UDRP. I'm not rather sympathetic towards such attempts either, and
better hope someone doesn't do that to you and you maybe complain about it later.

 

[urlurl]

what if the WIPO route fails?

- im assuming the price would be jacked up 1,000% afterwards

- Can the .com owner counter-sue, based on stress + legal fee's?

 

[katherine]

what if the WIPO route fails?

- im assuming the price would be jacked up 1,000% afterwards

- Can the .com owner counter-sue, based on stress + legal fee's?

Everything is possible, including the owner counter-suing.
And WIPO turns to weep

 

[Gerry]

I just started trademark application in 2010. I wonder after the trademark application is approved

If there is a product or site out there with the same name, then the lawyer doing the actual trademark application may reject you application for TM based on those terms.

Is you URL name "famous" because of your efforts or the efforts of others?

That is the real question. Did you come up with a product or service that became recognized on its own merits or is your site getting traffic because the name is in use because of someone else's efforts?

I think you need to be more concerned with proving your valid claim to TM rather than what you want to do after you have the TM.

 

[stock_post]

what if the WIPO route fails?

- im assuming the price would be jacked up 1,000% afterwards

- Can the .com owner counter-sue, based on stress + legal fee's?

The domainers would celebrate if he does that and win.
Both cases 1000% or the second one

 

[draggar]

what if the WIPO route fails?

- im assuming the price would be jacked up 1,000% afterwards

The owner has every right to do this.

- Can the .com owner counter-sue, based on stress + legal fee's?

If they are in the USA then yes, you can sue whoever you want for whatever you want - you just need to prove to a jury why you deserve it.

But - the only way the OP should be able to fiile a successful WIPO is if he can prove that the owner of the .com is infringing on his trademark. Oh, wait, he doesn't have one. It'll be extremely hard to win and I'm sure the rest of the domaining community would look at it as an attempt at reverse hijacking.

The real question is - was the .com available when the .org was registered? It's also hard to believe that the site took off and was so successful 4 months after registration that someone took the .com to profit off of their success.

Could the domain be considered a generic?

 

[MAllie]

I know it's not the issue, but I have to say I can't understand the mind set of someone who would register a dotorg and go to the trouble of building a good website on it without protecting it by also buying the dotcom, if not at the time of purchasing the dotorg then at least as soon as the website was being launched. It seems to me, with my limited experience, that it's probably best practice to always buy the dotcom at the same time as a dotorg you have definite plans for, and probably also the dotnet and dotinfo also. In the end the cheap route can be the most expensive one.