some help please: company claiming trademark

[reed]

Hi,

A few of you may remember this from last year, here are the details from then:

I registered a name that I want to develop but hadn't done anything yet with it. In mid year I received an email asking to purchase it and I declined. This same person then registered the .net version after I declined and also filed a trademark on the name. He then wrote back saying they had a trademark and want to purchase the .com version, and again I declined.

Today, I received a voicemail and this person wants to "work something out" and "they did some research and found that since I'm not using the site and it is sitting there and they have a site running and are actively using the name, then they have a good legal basis to take it."

I've been involved in other projects and haven't had much time to work on the site and would still like to do so in the future.

Does he have any standing still since I haven't gotten anything up on the site yet? He's always throwing out these little jabs about trademark each time he emails his offers of $100.

Thanks in advance.

 

[DrWho]

Originally posted by reed
Hi,

A few of you may remember this from last year, here are the details from then:

I registered a name that I want to develop but hadn't done anything yet with it. In mid year I received an email asking to purchase it and I declined. This same person then registered the .net version after I declined and also filed a trademark on the name. He then wrote back saying they had a trademark and want to purchase the .com version, and again I declined.

Today, I received a voicemail and this person wants to "work something out" and "they did some research and found that since I'm not using the site and it is sitting there and they have a site running and are actively using the name, then they have a good legal basis to take it."

I've been involved in other projects and haven't had much time to work on the site and would still like to do so in the future.

Does he have any standing still since I haven't gotten anything up on the site yet? He's always throwing out these little jabs about trademark each time he emails his offers of $100.

Thanks in advance.

What is the domain name?

 

[reed]

Here is the original thread:

http://dnforum.com/showthread.php?s=&threadid=11167

 

[GeorgeK]

Reed: Besides the cases mentioned in that thread, there's the case of Verint.com, at:

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0896.html

You shouldn't have anything to worry about. And, since they threatened you, you should just raise the price.

 

[DrWho]

Originally posted by GeorgeK
Reed: Besides the cases mentioned in that thread, there's the case of Verint.com, at:

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0896.html

You shouldn't have anything to worry about. And, since they threatened you, you should just raise the price.

Raise it to $5k

 

[GeorgeK]

If you go to their website, www.zride.net , they are even using the Registered Trademark symbol (R inside a circle) next to zride at the very bottom.

However, their Trademark Application (application 78148246) hasn't been approved yet! Unless they have a registered trademark in a different country, that's a big no-no.

Go to: http://www.uspto.gov/main/trademarks.htm

and click on "Search Trademarks (TESS)" and then New User Form Search (Basic) to search for "z ride" (space is needed between "z" and "ride" to work).

 

[reed]

Originally posted by GeorgeK
If you go to their website, www.zride.net , they are even using the Registered Trademark symbol (R inside a circle) next to zride at the very bottom.

However, their Trademark Application (application 78148246) hasn't been approved yet! Unless they have a registered trademark in a different country, that's a big no-no.

Go to: http://www.uspto.gov/main/trademarks.htm

and click on "Search Trademarks (TESS)" and then New User Form Search (Basic) to search for "z ride" (space is needed between "z" and "ride" to work).

Interesting, where does it denote that it has not been approved yet? Because it does not have a registration number an the status page?

 

[jberryhill]

"Interesting, where does it denote that it has not been approved yet?"

For one thing, it is filed as an ITU, and there has been no statement of use filed, and...

"Because it does not have a registration number an the status page?"

...that would also be quite a hint, along with the fact that it was approved for publication and then withdrawn from publication when the prior allowance count was withdrawn.

 

[reed]

Thank you, that is some very good info. I do appreciate the help and will research the issue further.

It's frustrating since he emails me his interest and says he's a "broke s.o.b." and can't afford much, and then follows up with "we have a trademark on the name". I really don't want sell as I'm getting closer to getting the content together for the site and I was worried about this new issue.

 

[David G]

Originally posted by GeorgeK If you go to their website, www.zride.net , they are even using the Registered Trademark symbol (R inside a circle) next to zride at the very bottom. However, their Trademark Application (application 78148246) hasn't been approved yet! Unless they have a registered trademark in a different country, that's a big no-no....

I am fairly certain if a mark is considered to be a trademark by its user but not actually filed or perhaps filed but not registered - the letters TM may be used next to the name.

If the mark is actually registered then the R in a circle is used.

The R may not be used unless actually a registered mark from what I understand.

 

[namedropper]

I'd just be straight with the guy. Tell him he has no case, up your price through the roof (train him so that threats mean you double your asking price) to make up for the distaste of having to deal with someone threatening you, and instruct him that any further legal threats should be only be sent by a licensed lawyer who knows what he is talking about or else it will be considered harassment and reported to his ISP (if via email) or the police (if through voicemail).

 

[reed]

Here's the latest email, after the last go around with this guy.....

"It’s your choice. Either you can sell the ZRIDE.com domain now for $100 or:

“Sometimes a person (known as a “cybersquatter”) registers a trademark as a domain name hoping to later profit by reselling the domain name back to the trademark owner. If you believe that someone has taken a domain in bad faith, you can either sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), or you can fight the cybersquatter using an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN). The ACPA defines cybersquatting as registering, trafficking in, or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else. The ICANN arbitration system is considered by trademark experts to be faster and less expensive than suing under the ACPA, and the procedure does not require an attorney.”

 

[beatz]

Originally posted by reed
"If you believe that someone has taken a domain in bad faith,..”

Here is where the guy doesn't have a case imho.

As, if i understood it correctly, he both registered the .net version and applied for the TM *AFTER* you had registered the .com name.

So from that he would not be able to prove "bad faith".

Quite the other way around.

Just IMHO of course.

 

[reed]

Originally posted by beatz


Here is where the guy doesn't have a case imho.

As, if i understood it correctly, he both registered the .net version and applied for the TM *AFTER* you had registered the .com name.

So from that he would not be able to prove "bad faith".

Quite the other way around.

Just IMHO of course.

That is about the same I was thinking, I'd like to tell him to get lost because I'm still working on the site, but was worried he might actually win because I don't have anything on the site, it's just been parked while I finish up some other projects.

 

[timechange.com]

Point it to Cum-Fiesta