Trademark published for opposition on one of my domains (by a NASDAQ listed company)

[RatherGood]

I'm wondering what the next best move is. I know I should most definately avoid parking it and earning revenue on ads for the keyword and putting up a for sale page. The domain name is the same as one of their new product lines. I registered the name in 2003, the product line was not announced until 2005 and the final trademark should be approved in 2006 (published for opposition in late 2005).

I'm contemplating developing it into something completely unrelated for now.

I see a sliver of a chance I could keep the name, I'm just wondering whats the best way to avoid a "registration in bad faith".

 

[jberryhill]

I'm just wondering whats the best way to avoid a "registration in bad faith".

Ummm... you already avoided that when you registered the domain name.

http://www.arb-forum.com/domains/decisions/434268.htm
In that connection, it seems clear from the facts of record that Respondent registered the subject domain name in March of 2000, approximately one month before Complainant came into existence, and nearly five years before Complainant first used its MULTICAST mark in commerce. On these facts, both parties being domiciled in the United States, Complainant could not hope to win a first-to-use contest with Respondent under relevant U.S. law. Moreover, the language of Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration.” See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001).

 

[RatherGood]

Ummm... you already avoided that when you registered the domain name.

Let me rephrase; I'd like to avoid doing anything with the name that would construe "bad faith" usage.

 

[Anthony Ng]

Why not file for an opposition? ;D

 

[DNQuest.com]

Let me rephrase; I'd like to avoid doing anything with the name that would construe "bad faith" usage.

What John was saying is that since you registered the domain before the product line was announced, there is no proof a bad faith registration on your part (because it was reistered before the lice came out) which is a criteria of proving bad faith. So you can do what ever you like with the domain. If the company comes after you, claim reverse hijacking.

This is contingent that you weren't part or had proprietary knowledge of the product coming out (menaing, that you were not part of the company or somowhow connected with product R+D)

 

[mark]

I'm wondering what the next best move is.

-------------
i would hire berryhill.. or someone similiar. obviously the domain has value. nuff said.

 

[RatherGood]

What John was saying is that since you registered the domain before the product line was announced, there is no proof a bad faith registration on your part (because it was reistered before the lice came out) which is a criteria of proving bad faith. So you can do what ever you like with the domain. If the company comes after you, claim reverse hijacking.

This is contingent that you weren't part or had proprietary knowledge of the product coming out (menaing, that you were not part of the company or somowhow connected with product R+D)

I definately had no prior knowledge of the product.

Actually I just checked strategis (Canada marks) and they had the exact term approved in July 2005 which may be more of a problem. I feel good about defending a UDRP, but I don't know about any legal problems arising for trademark infringement within Canada.

Maybe my fellow canucks have had some experience with this.

 

[DNQuest.com]

You are still missing the point, if it is clear that you registereed the domain before the date of first use of the TM (not when was it was registered), then they have no claim to the domain. You say it was approved in July 2005, when was thier claim of first use for the TM? that is the real question.

 

[Dave Zan]

Call me skeptical, but I really wonder how exactly did you come up with that
name without prior knowledge of the product, especially if the name's unique. :evil:

 

[Luc]

I'm wondering what the next best move is. I know I should most definately avoid parking it and earning revenue on ads for the keyword and putting up a for sale page. The domain name is the same as one of their new product lines. I registered the name in 2003, the product line was not announced until 2005 and the final trademark should be approved in 2006 (published for opposition in late 2005).

I'm contemplating developing it into something completely unrelated for now.

I see a sliver of a chance I could keep the name, I'm just wondering whats the best way to avoid a "registration in bad faith".

it's OBVIOUS that you are facing a very serious problem. as a person not qualified to provide legal advice i strongly recommend that you put up the following picture on the home page in order to avoid being arrested, sued, shot or mugged.

http://www.boomersfunnies.com/Pictures/Bush Monkey.jpg

doing so is an obvious "next step" and will ensure that you show your best intentions.

 

[DNQuest.com]

Luc, you really can't say that unless 1- we actually know the name and 2- the time line of the TM first use. If the domain was registered before the first use of the domain, then there isn't bad faith registration. It's too vague to make an real advise.

 

[RatherGood]

You are still missing the point, if it is clear that you registereed the domain before the date of first use of the TM (not when was it was registered), then they have no claim to the domain. You say it was approved in July 2005, when was thier claim of first use for the TM? that is the real question.

Their first press release/public use was in mid 2005.

I get the point of the registration date as it applies to UDRP, but I was wondering if the creation date has any impact on trademark litigation, not UDRP.

Like I said, I just found out the mark is registered in Canada so in that light the US application doesn't really matter now.

 

[DNQuest.com]

If it does go to litigation, then I would suggest getting a good domain lawyer if the TM was truely after the domain registration (there should be a "first uage in commerce" field in the TM registration application, that is what the company earliest use of the TM occured). Then the company would in the act of reverse hijacking and I would countersue.

Like I said, nothing is definate since we don't know the name being discussed. But if it is after your registration, you should be in the clear. You can't claim bad faith intent if the TM never exsisted when you registered the domain. Again, this is all contingent on the undiclosed factors.

 

[Luc]

dnquest. my post was a joke bro. i'm no lawyer but from what jberry said and from personal experience i'd say he's totally in the clear.

 

[DNQuest.com]

Ok I see, but this is the legal section and posts like that could be taken seriously (people will only read what they want to read). Thank you for clearing it up.

 

[labrocca]

I am not sure why no one has mentioned this but have you considered sending them a letter telling them to stop infringing on your TM? Since you have first use I would think that would be appropriate. That might open solid negotiations for them to pay you solid income for the domain.

 

[RatherGood]

I am not sure why no one has mentioned this but have you considered sending them a letter telling them to stop infringing on your TM? Since you have first use I would think that would be appropriate. That might open solid negotiations for them to pay you solid income for the domain.

Thats a great idea, I might try that rather than waiting for them to contact me.

I did find a nasty WIPO ruling in their favour though after doing a search.

They were actually the defendant and started using someone else's registered mark for the exact same thing in the exact same market (the domains were even registered after the complainant's trademark was approved).

They still won, oddly enough. :evil: