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   Owner of my trademarked URL won't give it up
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   Author  Topic: Owner of my trademarked URL won't give it up  (Read 1356 times)
rlutterb
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Owner of my trademarked URL won't give it up
« on: May 22nd, 2007, 12:00pm »
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I'm a small business trying to get off the ground... I was just notified by the USPTO that my business name has been trademarked!  Woo hoo!
 
My company, call it "UniqueNamedBiz" (to say, it's as unique as "Kleenex" for instance) would like to buy "UniqueNamedBiz dot com", however the guy who owns it won't budge, and moreover, for years his site only loads an "under construction" message that confuses the crap out of my clients.  Some have called thinking I'm out of business!
 
I already own the "net" variant, but that isn't helping much.  What can I do to make him more apt to sell me my trademarked dot com URL?  Can I at least encourage him to put up a disambiguation page that reroutes to my site?
 
Thanks!
 
Ryan
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still_studying
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Re: Owner of my trademarked URL won't give it up
« Reply #1 on: May 23rd, 2007, 5:33pm »
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You would have to go through the ICANN "cybersquatting" dispute resolution process.
 
If he has refused to sell (and he isn't just trying to extort a higher price) and if he owned it before you attempted to use the name (you point out that he has owned it for years, but your trademark just went through very recently), then you are probably SOL.
 
Looks like there's also a way to sue in U.S. court under the Anti-Cybersquatting Consumer Protection Act, but only if he's attempting to profit from your business name AFTER you've built the business.  Based on what you imply (that he owned the domain name long before you ever thought of it), you're SOL on that.  (To quote Nolo's website about it, one thing you must prove is that "the trademark was distinctive at the time the domain name was first registered", which seems not to be the case.)
 
I'll leave it to the trademark attorneys to discuss whether HE has rights involving your business name based upon his prior use.  Grin
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Dave_Zan
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Re: Owner of my trademarked URL won't give it up
« Reply #2 on: May 24th, 2007, 12:46am »
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on May 22nd, 2007, 12:00pm, rlutterb wrote:
Can I at least encourage him to put up a disambiguation page that reroutes to my site?

 
You certainly can. And they can also ignore you.
 
Like I told you another place, check with an attorney if you insist on grabbing
something that doesn't belong to you, especially if the other party can show
their rights pre-dates yours and/or still doesn't infringe your trademark, if any.
 
Oh, and fancy meeting you here.
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Dave Zan
www.DaveZan.com
mledet
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Re: Owner of my trademarked URL won't give it up
« Reply #3 on: Jul 24th, 2007, 1:26am »
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I had the same problem, I sued in Federal court.(I won a default judgment)  If he has never used the name in commerce, and is attempting to sell it at a higher price than his out of pocket cost, you can and should sue for trademark infringement. Cyber-squatting is only for active web-sites. Forget ICANN, the findings can be easily over turned then you end up in Federal Court anyway. However, this can get expensive, but just a filing of the suit may be enough to get his attention and give your offer a second thought.
 
Best of Luck
Michelle
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