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[rnee]

I hired a advertising/web designing company and decided I no longer wanted their service. Out of spite, my website was closed down and  domain name is being held hostage. I did create a variation of the old url. My concern is my  business name is the same as the former website/social sites. Would it be good idea to pursue this legally first. If not resolved how would this affect me when I apply for a trademark? Should I change my business name to my new url? Thanks

[rnee]

Thank you Kaitlin for the response. I appreciate it. Unfortunately there was no contract, but all the interaction with the company are written conversations.

[Kaitlin]

Hi, sorry I deleted my reply while you were responding!

Wait for others to weigh in on how to proceed against the website developer.  Some of that may depend on current internet law, an area in which I'm not really current.  Largely, however, it will be a contract issue and you'll need to look to the terms in the agreement under which you hired them.  This is not to say that the terms of the contract will necessarily dictate how things play out.  The law can sometimes override what's put in agreements, especially agreements that aren't negotiated--if that's the case here.  (Did you sign, or click agreement to, a pre-printed contract, or was there back and forth between you and the developer over terms?  Did the agreement include provisions about what constitutes a breach and/or what happens if a party breaches?)

Something which others in the forum may know better than I, is whether it is permissible to hold a website domain name hostage to a contract dispute over a website design, or if this would constitute illegal cybersquatting.

As for the trademark, however, understand that in the US trademark rights do not exist in the abstract.  Rather they must be tied to a product or service being offered by the business, and they are created by the business USING that mark to show its goods or services all come from one common source, namely itself.  A company can apply for trademark registration before it has begun using the mark with an "ITU" ("intent-to-use") application, but the business must have a bona fide intent to use the mark.  A business which is merely preventing another from using a domain name should have no trademark rights in it. 

Thank you Kaitlin for the response. I appreciate it. Unfortunately there was no contract, but all the interaction with the company are written conversations.

As to your recent post, you do have a contract.  The contract is composed of your written conversations. 

[rnee]

Hi, sorry I deleted my reply while you were responding!

Wait for others to weigh in on how to proceed against the website developer.  Some of that may depend on current internet law, an area in which I'm not really current.  Largely, however, it will be a contract issue and you'll need to look to the terms in the agreement under which you hired them.  This is not to say that the terms of the contract will necessarily dictate how things play out.  The law can sometimes override what's put in agreements, especially agreements that aren't negotiated--if that's the case here.  (Did you sign, or click agreement to, a pre-printed contract, or was there back and forth between you and the developer over terms?  Did the agreement include provisions about what constitutes a breach and/or what happens if a party breaches?)

Something which others in the forum may know better than I, is whether it is permissible to hold a website domain name hostage to a contract dispute over a website design, or if this would constitute illegal cybersquatting.

As for the trademark, however, understand that in the US trademark rights do not exist in the abstract.  Rather they must be tied to a product or service being offered by the business, and they are created by the business USING that mark to show its goods or services all come from one common source, namely itself.  A company can apply for trademark registration before it has begun using the mark with an "ITU" ("intent-to-use") application, but the business must have a bona fide intent to use the mark.  A business which is merely preventing another from using a domain name should have no trademark rights in it. 

Thank you Kaitlin for the response. I appreciate it. Unfortunately there was no contract, but all the interaction with the company are written conversations.

As to your recent post, you do have a contract.  The contract is composed of your written conversations. 

Okay good to know.

[Kaitlin]

Hi again.
I removed my post because I felt your question was actually going to a different matter from what I originally thought.

Seems to me now that the thrust of your question is whether you can move ahead with a slightly different domain name that still incorporates your business name.  And whether you can still have your business name serve as your trademark.  Is this correct?
----
(BTW, make sure that any further information you post continues the anonymity you've used so well so far: no real names of the other party, or of yourself, your business name, domain name or your mark, or even the product or service if it's peculiar. )

[rnee]

Yes, I worried about how this problem will affect my business when I apply for a trademark. I also do not like someone else having ownership of my intellectual property. What problems will that create for me? 

[Zonath]

I hired a advertising/web designing company and decided I no longer wanted their service. Out of spite, my website was closed down and  domain name is being held hostage. I did create a variation of the old url. My concern is my  business name is the same as the former website/social sites. Would it be good idea to pursue this legally first. If not resolved how would this affect me when I apply for a trademark? Should I change my business name to my new url? Thanks

Well, it's possible that you could use the UDRP (Uniform Domain Name Dispute Resolution Policy)  to attempt to get your domain name back.  You would need to be able to show that you had a right to use the name which is superior to that of the person who currently holds the domain name, and that the person who currently holds the domain name has been registered in bad faith.  If you would be able to show those things, then the arbitrator could order that the domain name be transferred to you.  Of course, UDRP costs a bit of money, and if you're not especially attached to your current business name, it may be cheaper and less of a headache just to switch.

I don't know exactly how much it would affect a trademark application to have someone else who's just holding a domain name hostage out there.  If they were actually using the name for something other than just parking the domain, and filed a challenge to your registration of a confusingly-similar trademark name, then it could possibly cause problems.  At the same time, I don't think them just being out there holding a domain name hostage would qualify them for any kind of consideration before the USPTO on the question of what your rights are regarding a proposed registration.  Obviously, it can be beneficial to try and clear up any potential roadblocks prior to filing for registration if you can, just so as to ensure a smooth process.

[rnee]

I hired a advertising/web designing company and decided I no longer wanted their service. Out of spite, my website was closed down and  domain name is being held hostage. I did create a variation of the old url. My concern is my  business name is the same as the former website/social sites. Would it be good idea to pursue this legally first. If not resolved how would this affect me when I apply for a trademark? Should I change my business name to my new url? Thanks

Well, it's possible that you could use the UDRP (Uniform Domain Name Dispute Resolution Policy)  to attempt to get your domain name back.  You would need to be able to show that you had a right to use the name which is superior to that of the person who currently holds the domain name, and that the person who currently holds the domain name has been registered in bad faith.  If you would be able to show those things, then the arbitrator could order that the domain name be transferred to you.  Of course, UDRP costs a bit of money, and if you're not especially attached to your current business name, it may be cheaper and less of a headache just to switch.

I don't know exactly how much it would affect a trademark application to have someone else who's just holding a domain name hostage out there.  If they were actually using the name for something other than just parking the domain, and filed a challenge to your registration of a confusingly-similar trademark name, then it could possibly cause problems.  At the same time, I don't think them just being out there holding a domain name hostage would qualify them for any kind of consideration before the USPTO on the question of what your rights are regarding a proposed registration.  Obviously, it can be beneficial to try and clear up any potential roadblocks prior to filing for registration if you can, just so as to ensure a smooth process.

I have proof it was used in bad faith.

[Kaitlin]

Yes, I worried about how this problem will affect my business when I apply for a trademark.

Remember, you are not applying for a trademark.  Trademarks are created by USE.  Registering them with the PTO gets you wider coverage and easier enforceability for your rights, but the rights themselves are created by you using the mark, not by the registration process.  And even if you do an ITU application, you don't get registration till you use the mark in (interstate) commerce.

I also do not like someone else having ownership of my intellectual property. What problems will that create for me? 

Mere ownership of a domain name does not translate into ownership of trademark rights in the domain name or any part of it. Trademark rights depend on the trademark being used as a trademark, i.e. as a brand. 

To give some background on how trademarks work:

Say you establish a trade name for yourself, Flibbity Widgets, Inc.  You use it on your letterhead and in your contracts.  Do you have a trademark in the business name?  Not yet.  You need to use it as a brand for your goods/services:  advertise the goods/services with it, mark it on the goods or their containers, etc.  (While many businesses use their trade names as their trademarks, the two are distinct and it's possible to have a trade name which is not used as a trademark.)

Now, say someone gets you a domain name:  Flibbity.com.  As I understand it, even if that someone "owns" that domain name, there is nothing to prevent you from going out and establishing the domain names "Flibbitywidgets.com" or "MyFlibbity.com," etc.  And (active practitioners, please jump in to correct or expand on this as necessary) the only way the owner of Flibbity.com could prevent another from using "flibbity" in their domain name would be through the trademark laws.  But to do this, they would need to be using "Flibbity" AS A TRADEMARK -- not just owning the domain name.

My concern is my  business name is the same as the former website/social sites. Would it be good idea to pursue this legally first. If not resolved how would this affect me when I apply for a trademark? Should I change my business name to my new url?

As I see it, the concern isn't how this will affect registering the trademark.  The concern is what practical impact it may have on your business.

The above is nice ivory-tower legal theory over whether a guy sitting on a domain name has standing to move against you in trademark.  When it comes to practicalities, however, more needs to be considered.  For instance:
-If you don't resolve the contract issue, will the other party take you to court on the contract if you don't capitulate? 
-If he breached the agreement in bad faith and knows it, would he readily capitulate to you if you if he heard from your attorney?
-Will he think he has more rights in the name than he does and try to put you in a defensive position either with regard to domain name or to trademark registration -- so that you'll have to hire someone to straighten him out? 
-Would the lack of ability to use the name as you wanted impact your marketing?


If you can at all afford it, you should be consulting with your own counsel about this.  Ideally, a trademark attorney who both knows internet law and has experience with contract disputes.

It is ALWAYS good practice to see a trademark attorney before investing in the name and branding of a new business, anyway.  Some names make stronger trademarks (and so are more easily enforced) than others.  Also, many people don't do a proper search of other marks that are out there, so that AFTER they've sunk money into promotion, establishing websites, tooling up with the name on the product, etc., they find themselves sued by someone else in a similar line of business with a claim to priority.  The standard for trademark infringement is "likelihood of confusion".  Unlike domain names and trade names, which can coexist if they're not exactly the same as another, trademarks depend on a multitude of factors involving such things as look, sight, sound, and meaning of the words as well as the type of products/services at issue and whether they are high end or low end, retail or wholesale, niche or general appeal, etc.  And marks do NOT have to be federally registered to cause problems.  Trademark searching is an art.

If you can't afford an attorney, certainly read up on trademarks -- what they are and what they aren't, what's strong and what's weak.  The PTO website tends to address only the aspects that concern registration, but there's much more to it.  This forum can be a good source of information, also the Nolo Press books on law for the layman are usually pretty well done and are available in many libraries.  And there are a number of law firms that have explanatory articles for prospective clients that explain some of the basics.  Searching a combination like "likelihood of confusion" along with "strong mark" or "strong trademark", "generic" and "descriptive", along with "common law" should bring up relevant articles.

[artchain]

Kaitlin clearly laid out many of the considerations for a business trademark. 

It is entirely possible for you to acquire rights and register a trademark for Flibbity, even if the designer owns the Flibbity.com domain (and you could register a new domain, such as MyFlibbity.com).  One practical consideration is that you would then need to work harder on "search engine optimization" in order to have searchers find your site first when they search for your product or service.

Lets assume for a moment that you do acquire trademark rights to Flibbity.  Since the web designer seems to have no legitimate use for the domain Flibbity.com, and is simply "holding it hostage," you may be able to claim the domain name under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  The UDRP is intended to protect trademark holders from "domain name extortion,"  and may be applicable in this case. 

You'll probably want to consult an attorney with experience in domain name issues, but here are some links that will give you the general idea:

http://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-Resolution_Policy

http://www.icann.org/en/udrp/udrp.htm



By the way, for a general understanding of trademark considerations, I recommend the book "Trademark:   How to Name your Business and Product," from Nolo Press.

[rnee]

Okay thank you guys. Good information. I wished I did my research prior about researching trademarks. I just checked on the site for its availability. Thought that was enough.