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   Trademark / Domain Name Issue
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   Author  Topic: Trademark / Domain Name Issue  (Read 543 times)
John Mackenzie
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Trademark / Domain Name Issue
« on: Oct 9th, 2007, 11:18am »
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I was recently awarded two Trademarks. The one I need to use for my business has been in use since "Record created on 12-Nov-1997"
 
The Company who registered this domain is using it as I would, for Edible Landscaping. They have been using this for what appears to be nearly ten years. although I cannot be certain, it is certainly far longer than I have owned the Trademark.
 
On one hand I feel awful to think someone who is executing the concept well should lose the Domain. On the other hand, I am the awarded Trademark owner and have been in this business for several years.  
 
I have spoken to several attorneys who have given me several paths:
 
Civil action in Federal Court which will be expensive, likely costing well over $150K and taking in excess of several years to resolve. They seem to insist I will prevail stating odds in the 80% range. They all suggest it will be very difficult to recover any damages and attorney fees associated with the Civil action.
 
The other course of action is through the WIPO / Arbitration and Mediation Center.
 
The criteria they use are as follows:
 
a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
 
    (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
 
    (ii) you have no rights or legitimate interests in respect of the domain name; and
 
    (iii) your domain name has been registered and is being used in bad faith.
 
Comments appreciated.
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JSonnabend
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Re: Trademark / Domain Name Issue
« Reply #1 on: Oct 10th, 2007, 7:29am »
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First of all, you have not been "awarded a trademark".  The most you could have "been awarded" is a trademark registration.
 
If the other party has been using the name as a mark longer than you, even if they haven't registered the mark, then their rights are likely superior to yours.  You may have a registration on a mark you won't be able to use.
 
Finally, if the other side has had the domain registered since before you began use of the mark, then there's likely little you can do to forcibly obtain the domain from the other party.  The same may be true even if you began use of the mark first, depending on how the other party is using the registered domain.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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