Can a Word Mark be enforced retroactively?

[oohlalaw]

We have owned and used a domain name for at least 8 years and today received an email from someone demanding we give up the domain name because they filed a Word Mark with the same name. The exact demand is that this person's attorney "advised us to contact you first and give you a reasonable amount of time to remove the name from your website, publications, etc before we ask you legally." The Word Mark was filed in Sep of this year. We are in Colorado. My questions are:

1) Can a law firm force us (sue us) to give up the domain name or is this person (or law firm) just trying to intimidate us to give it up either now or when it's time to renew the domain name? In other words, can a Word Mark be enforced retroactively like this?

2) If we decide to give up the domain name, can we sell it to them? It seems to me that big corporations pay a lot of money to buy domain names that other people own.

Thanks for any advice.

 

[FlyingRon]

There are two issues here:

Trademark issues.
Domain name dispute.

The question is how you came to obtain the domain name, what your use of the site is, and what is the scope and use of their trademark.

Trademark rights are obtained by use in commerce. You don't "file" for them. Registration may give them additional protections however.

Unless you are intentionally trying to interfere with their business, create confusion between the brands, or game on their fame OR you specifically obtained the domain in bad faith (i.e., you grabbed it in hopes of being able to sell it to someone with a legitimate use for it be it a trademark or company name), I'd either ignore them or tell them to pound sand. If you want to offer to sell it, you can. I have a domain that I regularly get offers on (but I'm not giving it up).

They can sue you in court over the trademark issues.
They can take your bad faith use of a domain name to one of the approved arbitration bodies. DNS disputes are not ruled by any sane measure of law.

However, it's cheap and easy to write letters, more time and money consuming to take things to court, and harder to prevail.

 

[oohlalaw]

There are two issues here:

The question is how you came to obtain the domain name, what your use of the site is, and what is the scope and use of their trademark.

Trademark rights are obtained by use in commerce. You don't "file" for them. Registration may give them additional protections however.

Unless you are intentionally trying to interfere with their business, create confusion between the brands, or game on their fame OR you specifically obtained the domain in bad faith (i.e., you grabbed it in hopes of being able to sell it to someone with a legitimate use for it be it a trademark or company name), I'd either ignore them or tell them to pound sand. If you want to offer to sell it, you can. I have a domain that I regularly get offers on (but I'm not giving it up).

We coined the term of the domain name in question, so there is no bad faith as far as we know. A year or two later, a lady who teaches toilet training either saw our use of the term in question or else thought it up herself and started using it, along with loads of other parenting and toilet training terms she is trademarking.

What I meant by "file" is the Filing Date of this person's Word Mark.

Thanks very much for your comments. We are tempted to ignore this person for now.

 

[FlyingRon]

We coined the term of the domain name in question, so there is no bad faith as far as we know. A year or two later, a lady who teaches toilet training either saw our use of the term in question or else thought it up herself and started using it, along with loads of other parenting and toilet training terms she is trademarking.

What I meant by "file" is the Filing Date of this person's Word Mark.

Thanks very much for your comments. We are tempted to ignore this person for now.

Again, "trademarking" occurs from using it in commerce. By "filing" I assume you mean applying for registration. You can't get rights by registration without use (or at least the intent to use) in commerce. They obtain rights from the time they start using it in commerce NOT from when the registration is applied for.

"Coining the term" means squat, by the strict rules of UDRP, you are in good faith, but I've seen stupider things settled the opposite way.

Still, she's got a long way to go (and a ~$3000 filing fee) to get anywhere near taking the domain.

 

[justalayman]

Since it appears you actually have proof of prior use you have a superior claim to the filing. You need to take action to protect your mark which would include demanding no other entity use it in a manner which would cause confusion with your use. You also have a right to object to their registration of your mark and should be doing so.

It would also be beneficial for you to register your mark as well.

If you do not defend your mark you will lose the rights to claim it as yours.

 

[quincy]

We have owned and used a domain name for at least 8 years and today received an email from someone demanding we give up the domain name because they filed a Word Mark with the same name. The exact demand is that this person's attorney "advised us to contact you first and give you a reasonable amount of time to remove the name from your website, publications, etc before we ask you legally." The Word Mark was filed in Sep of this year. We are in Colorado. My questions are:

1) Can a law firm force us (sue us) to give up the domain name or is this person (or law firm) just trying to intimidate us to give it up either now or when it's time to renew the domain name? In other words, can a Word Mark be enforced retroactively like this?

2) If we decide to give up the domain name, can we sell it to them? It seems to me that big corporations pay a lot of money to buy domain names that other people own.

Thanks for any advice.

oohlalaw, are you using the domain name for anything other than a website address? Are you offering any product or service that conflicts with the other company's product or service? Has the other company become known for its product or service through its identifying mark?

It is possible for a company that has registered a trademark to legally take from you your domain name if your domain name use interferes with the marketing of their product or service, this despite the fact that you have used your domain name as a web address for longer than their mark has been used in commerce.

For example, if you invented the name "Starbucks" eight years ago for a website name and domain address, Starbucks could take from you your domain name and prevent your use of the name. That is because Starbucks is now a well-known trademark and can legally stop any other uses of their mark, or similar marks, that could lead to consumer confusion (this whether consumer confusion is demonstrated or not).

A domain name dispute is like any other trademark dispute. And, like any legal dispute, all facts need to be reviewed and considered before it can be determined if the woman who is marketing toilet training and parenting material actually has rights that can be legally enforced.

 

[FlyingRon]

They could, Quincy, unfortunately that's NOT the rules under UDRP (not that it hasn't been screwed up by arbitrators before).

If I coin the term, "DryForLife" or whatever and create a toilet training site (even if not being used for commerce, per se), this is not bad-faith cybersquatting.
If someone comes along and wants to sell training pants or whatever called "DryForLife" even if they have received trademark rights, doesn't make their claim superior in UDRP.

Now if there was a company called DryForLife (or using it as a mark) and I decided to grab that domain before they got it, or I'm just squatting on things that I think might be neat phrases for a business, I do run a risk under the rules.

Part of the problem with trying to apply trademarks and company names to domain resolution issues is that the "namespace" for marks and names are much bigger than that of .COM. For example, I own SENSOR.COM. I have had a business called SENSOR SYSTEMS in one for or another for 20 years. There are at least three other SENSOR SYSTEMS that I am aware of (we do geospatial computing, there's one that sells GPS antennas (they are the one we get most confused for), one in the UK that makes some sort of fire alarm), etc.. In addition there are over a thousand trademarks that use SENSOR in their marks (and that's just the US).

 

[quincy]

They could, Quincy, unfortunately that's NOT the rules under UDRP (not that it hasn't been screwed up by arbitrators before).

If I coin the term, "DryForLife" or whatever and create a toilet training site (even if not being used for commerce, per se), this is not bad-faith cybersquatting.
If someone comes along and wants to sell training pants or whatever called "DryForLife" even if they have received trademark rights, doesn't make their claim superior in UDRP.

Now if there was a company called DryForLife (or using it as a mark) and I decided to grab that domain before they got it, or I'm just squatting on things that I think might be neat phrases for a business, I do run a risk under the rules.

Part of the problem with trying to apply trademarks and company names to domain resolution issues is that the "namespace" for marks and names are much bigger than that of .COM. For example, I own SENSOR.COM. I have had a business called SENSOR SYSTEMS in one for or another for 20 years. There are at least three other SENSOR SYSTEMS that I am aware of (we do geospatial computing, there's one that sells GPS antennas (they are the one we get most confused for), one in the UK that makes some sort of fire alarm), etc.. In addition there are over a thousand trademarks that use SENSOR in their marks (and that's just the US).

I understand all you are saying, FlyingRon, and I have no problem with any of the information you provided, with one exception. I am not sure that telling the toilet-aid's attorney to "pound sand" is the best possible advice for oohlalaw, without at least knowing more first.

My understanding, from oohlalaw's posts, is that oohlalaw came up with a unique name and starting using it as a web address 8 years or so ago. A year or so after that, the toilet-aid company adopted the name for their product/service/company and used the mark in commerce to identify their company and what it offered. And the company recently registered this mark as an identifier.

Whether or not oohlalaw's use of this name as a website address/website name can lead to a successful trademark challenge by the company marketing toilet training aids depends on a whole host of factors, including the exact name being used and for what purpose the name is being used and if there can be shown dilution and/or confusion over oohlalaw's use of the same name. I do not see this as a cybersquatting issue - I do not see oohlalaw as a cybersquatter.

Perhaps oohlalaw can return with more information.

 

[oohlalaw]

Since it appears you actually have proof of prior use you have a superior claim to the filing. You need to take action to protect your mark which would include demanding no other entity use it in a manner which would cause confusion with your use. You also have a right to object to their registration of your mark and should be doing so.

It would also be beneficial for you to register your mark as well.

If you do not defend your mark you will lose the rights to claim it as yours.

I may be getting mixed up with terminology. We do not have a mark and have not tried to register a mark. We simply have a domain name and someone else who has recently filed a standard character mark wants to take away the domain name from us. I'll post more in reply to some of the other comments.

Thanks very much.

 

[oohlalaw]

oohlalaw, are you using the domain name for anything other than a website address? Are you offering any product or service that conflicts with the other company's product or service? Has the other company become known for its product or service through its identifying mark?

It is possible for a company that has registered a trademark to legally take from you your domain name if your domain name use interferes with the marketing of their product or service, this despite the fact that you have used your domain name as a web address for longer than their mark has been used in commerce.

We sell a toilet training product on our website, so in that sense there is a chance it could conflict, although our "method" is totally different (both in age of the kids and how it is done).

Is it okay to post the domain name in question here, or is that against the forum rules?

 

[oohlalaw]

My understanding, from oohlalaw's posts, is that oohlalaw came up with a unique name and starting using it as a web address 8 years or so ago. A year or so after that, the toilet-aid company adopted the name for their product/service/company and used the mark in commerce to identify their company and what it offered. And the company recently registered this mark as an identifier.

Whether or not oohlalaw's use of this name as a website address/website name can lead to a successful trademark challenge by the company marketing toilet training aids depends on a whole host of factors, including the exact name being used and for what purpose the name is being used and if there can be shown dilution and/or confusion over oohlalaw's use of the same name. I do not see this as a cybersquatting issue - I do not see oohlalaw as a cybersquatter.

Perhaps oohlalaw can return with more information.

Your first paragraph has summarized the situation correctly.

In one sense there is not much chance of confusion since our website and product (a DVD) deal with infants whereas the challenger's product is a toilet training "boot camp" for older kids; parents send their toddlers to her boot camp for some days. I have had people email me to ask if I teach the boot camps and I always say no.

If it would be helpful and isn't against forum rules, I can post the name of the mark.

 

[justalayman]

I may be getting mixed up with terminology. We do not have a mark and have not tried to register a mark. We simply have a domain name and someone else who has recently filed a standard character mark wants to take away the domain name from us. I'll post more in reply to some of the other comments.

Thanks very much.

actually it sounds like you may have rights to the mark, if you wish to claim them anyway. you do not have to have registered a mark to have rights.


and it sounds that there is likely to be confusion regarding the uses as there are basically dealing with the same market.

I have had people email me to ask if I teach the boot camps and I always say no.

and there is proof of confusion right there

 

[quincy]

Your first paragraph has summarized the situation correctly.

In one sense there is not much chance of confusion since our website and product (a DVD) deal with infants whereas the challenger's product is a toilet training "boot camp" for older kids; parents send their toddlers to her boot camp for some days. I have had people email me to ask if I teach the boot camps and I always say no.

If it would be helpful and isn't against forum rules, I can post the name of the mark.

Oh. Your situation as described now is far more complicated than just a domain name issue. The fact that people have emailed you, asking if you teach the boot camps being offered by the other company, demonstrates that there is consumer confusion generated by the dual use of the name and similar products being marketed.

Did you sell your DVD before the other company starting selling their toilet-training products under the same trademark?

Unfortunately, this forum does not allow for the publishing of commercial links so, although it would certainly be helpful to see what we are talking about here, please do not post the link to your site and please do not provide us with the real names involved. That information should be reserved for an attorney you see in your area - and your situation is one that requires a personal review.

If the other company is threatening to pursue legal action against you if you do not voluntarily cease using their registered trademark, this is not something you can simply ignore. You may have rights that will allow for you to continue using the mark but, because the other company has registered the name, the other company will be the presumed owner of the mark.

 

[justalayman]

You may have rights that will allow for you to continue using the mark but, because the other company has registered the name, the other company will be the presumed owner of the mark.

they have registered the mark or filed for registration?

 

[oohlalaw]

Did you sell your DVD before the other company starting selling their toilet-training products under the same trademark?

If the other company is threatening to pursue legal action against you if you do not voluntarily cease using their registered trademark, this is not something you can simply ignore. You may have rights that will allow for you to continue using the mark but, because the other company has registered the name, the other company will be the presumed owner of the mark.

Yes, we started selling our DVD before the other person started using a fairly similar name for her courses. As far as we know, she lifted the name from our website and started to use it for her courses. We did not want to trademark the title of the DVD; we assumed it's protected under copyright law. The DVD has been copyrighted.

It sounds like we should contact an attorney for further details.

Thanks.