Unique situation with my Trademark, Need Advice!

[ZaZZeR.com]

I received my certificate in the mail today. I officially own a registered trademark. That's the good news.

In July of 2003, my domain name was taken from me by a company that did not have their mark trademarked (I think it is now), but they started in business before me. The claimed it infringed on their mark and WIPO gave them the name because I didn't have the money to fight it in court. Now I have the trademark and I want the domain name back. What are my chances and how long of a process is it? Can I sue for damages? At the time when they took it, it was getting about 10k unique visitors per day and it was making about $7k-$10k per month. Do I even have a shot? Please advise or give me your opinions.

 

[GeorgeK]

I doubt you have any chance. Can't demonstrate "bad faith", when they won at UDRP and you didn't immediately appeal back then. The terms of the arbitration agreement probably limit your ability to even take action, because you did not appeal within the time limits when given the chance.

 

[ZaZZeR.com]

It wouldn't be in bad faith. They are a large company with millions of dollars and I wouldn't have stood a chance in a court of law. I talked to their A-Hole attorney on the phone and told him I would pull the site down if they would drop the case and let me keep the domain name and he said yes. Then the case was never dropped and he would never return my calls or anything. I was broke by then because that was my only source of income. I couldn't afford to protest it.

I just found out that there mark is not a registered trademark. They have filed but it keeps getting denied. Does that help my chances?

 

[Theo]

The way I understand it, you managed to register the same trademark for the domain you used to own, which they could not register in the first place?

If that's the case, great. Go ahead and challenge them in a UDRP.

 

[oberheimer]

I hope you win

 

[ZaZZeR.com]

Thanks, me too.

 

[draqon]

nope you dont have a hope in hell. this is clearly a lost cause.

 

[ZaZZeR.com]

Why don't I have a hope in hell? I own the trademark. Doesn't that count for something?

 

[Steen]

The entire situation sounds most unfortunate.

 

[dtobias]

You own, apparently (with only the sketchy facts in this thread to go on), a trademark on a domain you don't currently own, and which was taken away from you prior to your obtaining the trademark. Now you wish to use the trademark to get the domain back. Aside from the fact that you did once possess the domain in the past, these facts are similar to those in cases that are universally condemned as reverse hijackings.

 

[Dave Zan]

Not an attorney but let me share my feedback.

Read the mess.com UDRP: http://arbiter.wipo.int/domains/decisions/html/2004/d2004_0964.html

In that UDRP, the complainant registered a trademark of the same name as
the domain. But one reason they lost is because they obtained the trademark
after the domain name was registered.

So based on the details you provided, here are the problems:

1. You finally got the trademark, but it's registered after the domain name
was already registered.
2. You lost the UDRP at WIPO, so you now have a record there.
3. If you pursue it at UDRP again and if the respondent is smart, they might
prove they have either a legitimate use or not using it in bad faith. Worse,
you might get a reverse domain hijacking ruling, and that's a double whammy.

There are lots of factors to consider here. The best way to make sure is to
retain qualified legal assistance, especially one who specializes in this.

If indeed you have the greenbacks to spare, you might want to retain the
services of one of the resident attorneys here. Or you can ask one of the
pros, Ari Goldberger, at www.esqwire.com .

 

[dmyre]

Why would reverse hijacking be a double whammy?

 

[nitronet]

I received my certificate in the mail today. I officially own a registered trademark. That's the good news.

In July of 2003, my domain name was taken from me by a company that did not have their mark trademarked (I think it is now), but they started in business before me. The claimed it infringed on their mark and WIPO gave them the name because I didn't have the money to fight it in court. Now I have the trademark and I want the domain name back. What are my chances and how long of a process is it? Can I sue for damages? At the time when they took it, it was getting about 10k unique visitors per day and it was making about $7k-$10k per month. Do I even have a shot? Please advise or give me your opinions.

$7K-$10K a month and you didn't have the money to fight it in court?

That doesn't sound right to me, is there more to the story?

 

[ZaZZeR.com]

$7K-$10K a month and you didn't have the money to fight it in court?

That doesn't sound right to me, is there more to the story?

$7k-$10k per month GROSS. Ever heard of overhead? Cost of living? Food? Car payments? Servers? House Payment? Electricity? etc.?

By the time all that was coverd, there was maybe $800-$1200 leftover. Do you know an attorney that would fight a huge corporation in court for that? Well kudos to you if you do.

The point of this thread was not to get your opinion on if I could afford an attorney. The point was to get opinions on whether or not I have a chance of getting the domain back.

Yes there is more to the story, but as you can see earlier in this thread, I did not let that information be available to the public. I didn't mention the domain now did I? I mentioned all of the pertinent information for getting someone's opinion as to whether it was worth it for me to pursue, or not. Some things at this point, and on this forum, are completely irrelevent, like the statement you made above. Please stick to the subject. Thank you.

 

[Dave Zan]

Why would reverse hijacking be a double whammy?

I actually meant both losing the UDRP and getting a reverse hijacking in the
same ruling against you. That's the double whammy I'm referring to.

MilkyLicker, I just read the UDRP case involving that domain you PMd me. If
that's the trademark you got for, I hate to say this but IMHO I doubt you will
stand a chance.

Assuming that's the one, the main problem is you didn't reply at all. If you
don't reply to the UDRP at all, the panelist/s assigned has no choice but to
rule against you if the Complainant succeeds in convincing the panelist/s
the merit of their case.

And in that UDRP the Complainant succeeded in proving their case. Your non-
reply clinched further it in their favor and against you.

If you use the UDRP, the Panelist/s assigned to hear your case will no doubt
see the previous ruling (if it's for the same domain). Unless the attorney you
retain knows the ins and outs, I sincerely opine that not only will you lose, but
get a reverse hijacking ruling as others have previously pointed out.

But just to confirm, is the domain name you PMd me the one you recently got
the trademark for?

 

[nitronet]

That wasn't my point...

I thought that you could have diverted all of your income to fight them so that you possibly wouldn't be in the position you are in now.

Domain disputes are much fairer now than they used to be, I lost a few generic dictionary words years ago that I never should have.

I wouldn't count on a UDRP to get your domain back, I would think a real lawsuit would give you a better chance.

Sorry you took my comments the wrong way.

 

[namedropper]

In July of 2003, my domain name was taken from me by a company that did not have their mark trademarked (I think it is now), but they started in business before me.

Dude, for the number of times you posted here and got this clarified for you, it's amazing you are still getting this wrong. If they started in business before you using that name, they DID have a trademark.

And from the rest of your post it's clear you have no chance of gettting it back. If you don't bother to learn how the rules work then you just won;t get anywhere.

 

[Theo]

It's as clear as mud. MilkyLicker said he actually owns a registered mark now for the same words that the other company had a common law mark. So what would be the problem with filing a UDRP?

 

[namedropper]

Because mere ownership of a trademark doesn't give you greater rights to a domain name than someone else with the same mark, who previously already won a dispute, who didn't file a bogus trademark application, etc. etc.

The other side owns the domain fair and square and there's nothing in the UDRP that would give a reason to take it away. And considering MilkyLicker's past history of blatant and purposeful trademark infringement, it's likely that this situation is where he purposefully filed a trademark similar to someone else's buit in a different field solely for the purpose of trying to take the domain back from someone who legitimately had a trademark long before this ever started.

His latest spiel is just a clueless attempt at reverse cybersquatting as a way of retaliating for the a good decision on his prior cybersquatting.

 

[namestrands]

Is it worth the fight?

I would contact the company and state your claim and intentions to pursue it.