Trademark Question

[skylight]

I reg a domain, eg. ABCClothes.com
I direct it to PPC.

The company with the name ABCClothes that own the domain previously approach me to buy the domain at less than $100 because they forgot to renew.

I counter offer to eg. $200
They refuse and scold me unethical cyber squatter..blah blah blah...
They have a registered trademark, ABCCLothes not ABCCLothes.com

I did not approach them. They email me from the whois information.

I think they dont intend to get this domain through legal ways, but i am curious, will they be able to get it from me if they go through legal way?

If they success, do i need to pay anything except losing the domain?

Please advise.
Thanks.

 

[skylight]

Any advise?

 

[Domagon]

It's not the price that's turning them off, but likely how you countered theirs.

If you correspond with them again, explain how you paid for hosting, webpage design, etc...and have in short committed around $200 towards development of the domain.

For them to do a UDRP is going to cost them $1500 minimum and is a big hassle. If they're willing to offer $100, they'll most likely pay $200 if in the right mood.

When selling it to them, try to get the money first - if you must do escrow, be careful...they may be very slow in responding ... escrow.com is very good at keep transactions moving, and will typically release money to the seller even if things get bogged down, if appears the seller has lost control of the domain to the buyer.

Ron

 

[skylight]

Thanks for the advise !!

 

[adoptabledomains]

They have a registered trademark, ABCCLothes not ABCCLothes.com

In the beginning, the trademark office did approve some domains with the .tld. It's my understanding that now the .com or other .tld cannot be part of a trademark and having it or not will no longer make a difference in a trademark dispute, as the .tld will be ignored as part of the actual trademark, just like .inc or .llc would be.

In other words, the fact that the trademark does not have .com does not protect you from a dispute because you add it. On the other hand, if they had gotten a trademark on "abcclothes.com", that would not protect them completely either from anyone else having possession of the .com, since for trademark purposes, the ending is not counted.

If they have a point on the trademark, it is probably best to accept a reasonable price to relinquish it. This reasonable price could include registration and acquisition costs, time involved in searching for it, any development costs or other real costs you have in it. Most reasonable companies would probably pay up to $300-500 as it would cost more to have an attorney draft a C&D or file a dispute. Let your costs, time, and concience be your guide.

Good luck.

 

[Domagon]

Trademark law isn't quite that simple. A 2nd level domain name *including* extension *can* be registered as a federal mark the last I checked in some instances. Someone correct me if I'm mistaken here and post a link to the respective document(s).

Key is how it's being used...if it's primarily being used as a location, then the domain name is likely not a trademark in and of itself. However, a domain name that is prominently used to market a product/service may be trademarked in some instances.

Ron

 

[adoptabledomains]

Trademark law isn't quite that simple. A 2nd level domain name *including* extension *can* be registered as a federal mark the last I checked in some instances. Someone correct me if I'm mistaken here and post a link to the respective document(s).

Key is how it's being used...if it's primarily being used as a location, then the domain name is likely not a trademark in and of itself. However, a domain name that is prominently used to market a product/service may be trademarked in some instances.

Ron

This is my source of info on the subject: http://www.uspto.gov/web/offices/tac/tmep/1200.htm#_Toc2666059

Yes, I stand somewhat corrected. It seems you can include the .TLD in an already distinctive trademark, but adding one will not make a generic mark distintive and trademarkable.

It will really make no little or no difference in a dispute as the example first listed in this thread. The trademark lacking the .com ending does not mean the domain does not match the trademark and is fair game.

1209.03(m) Domain Names [R-2]
Internet domain names raise some unique trademark issues. A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services Portions of the uniform resource locator (URL) including the beginning, (“http://www.”) and the top level Internet domain name (TLD) (e.g., “.com,” “.org,” “.edu,”) function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function.. See TMEP §§1215 et seq. regarding marks comprising domain names. TLDs may also signify abbreviations for the type of entity for whom use of the cyberspace has been reserved. For example, the TLD “.com” signifies to the public that the user of the domain name constitutes a commercial entity. In re Martin Container, Inc., 65 USPQ2d 1058, 1060-1061 (TTAB 2002) ("[T]o the average customer seeking to buy or rent containers, "CONTAINER.COM" would immediately indicate a commercial web site on the Internet which provides containers."). See also Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) (“The addition of the word ‘Company’ [to an otherwise generic mark] only indicates that parties have formed an association or partnership to deal in such goods . . . .” and does not render the generic mark registrable).

If a proposed mark includes a TLD such as “.com”, “.biz”, “.info”, the examining attorney should present evidence that the term is a TLD, and, if available, evidence of the significance of the TLD as an abbreviation (e.g. “.edu” signifies an educational institution, “.biz” signifies a business).

Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) ("Applicant seeks to register the generic term 'bonds,' which has no source-identifying significance in connection with applicant's services, in combination with the top level domain indicator ".com," which also has no source-identifying significance. And combining the two terms does not create a term capable of identifying and distinguishing applicant's services."); In re Martin Container, 65 USPQ2d at 1061 ("[N]either the generic term nor the domain indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability."). See also Goodyear, 128 U.S. at 602 (the incorporation of a term with no source-indicating function into an otherwise generic mark cannot render it registrable). For example, if proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must refuse registration on the Principal Register under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. See TMEP §1215.04.

Similarly, if a proposed mark is composed of generic term(s) for the applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic. See TMEP §§1209.01(c)(i) and 1215.05.

 

[namedropper]

Mark (AdoptableDomains) is on the money on this one. The .com or not .com makes no difference on whether a domain is infringing someone's trademark or not.