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Logo Mark vs. Domain

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FlyingRon

Senior Member
Your link is irrelevant. This is not a false statement of goods or origins or anything related to federal law. It is the ICANN's UDRP process which will award a domain name to someone who has a legitimate use (legal entity name or trademark) over someone just squatting on the name in hopes that the good faith user will come along and pay them for the name.
 


quincy

Senior Member
Your link is irrelevant. This is not a false statement of goods or origins or anything related to federal law. It is the ICANN's UDRP process which will award a domain name to someone who has a legitimate use (legal entity name or trademark) over someone just squatting on the name in hopes that the good faith user will come along and pay them for the name.
The only domain name owners I have run across recently who have successfully beat back trademark infringement challenges by trademark holders, over the use of same/similar trademarks in their domain names, are those who are operating parody websites.

If MIKEPIN has no current use for the domain name, and any future use is likely to result in a legal action filed against him, it certainly makes sense to me for MIKE to simply give it up. The IP attorney he sees can review the name in question and perhaps this attorney will see the situation differently.
 

FlyingRon

Senior Member
Trademark challenges are distinct from UDRP. If you are using the domain to compete in a way that infringes trademarks, that indeed is fair game for a federal suit. The settlement from that may indeed result in an order to turn over the domain. The UDRP arbitration is a distinct (not based on sane rule of law) procedure. This is largely important because the domain namespace is smaller than the trademark sphere. Corporate names may or may not be trademarks but overlap in domain space as well.

For example, Alphabet is what Google calls their parent company. BMW already had the trademark (though litigation gave potential use of the mark to Google in the US). BMW still operates Alphabet.com and uses the mark most places other than the US. Google being a global corporation, has probably well decided not to use Alphabet much even though they have the US rights to it.

Another example. I own the domain "sensor.com." I founded a company called Sensor Systems back in 1993 back before the internet was as ubiquitous as it is now. We had marks for our market space (computer software). Turns out there are a half a dozen other Sensor Systems out there around the world. Notably, there's one that makes GPS antennas in California (who uses sensorsantennas.com). We have an amicable arrangement to redirect people looking for the other company. We also had an image processing software product in the early days called Xcalibur (a name that I detested). We got a cease and desist letter from a company that made a document processing system called Excalibur. After some lawyer chit chat we ended up with a similar agreement. Amusingly be ended up being bought by the same company and then were spun out again. The only "restriction" in the breakup was they wanted us to stop using Xcalibur. Actually, we'd already stopped and as I hated the name to begin with, I made that great concession to the deal.
 

quincy

Senior Member
They made a 20K offer 10+ years ago. We told them that we are not in it for the money. How can that be bad faith?
How is that bad faith? You retained a domain name that apparently the company believes infringes in some way with their current use of their marks, logos. And now you want to sell to them the domain name.

If you aren’t in it for the money, and you are not using the domain name for anything (although I question what exactly is appearing on your webpage that is causing an issue), I don’t understand why you want to hold the domain name.
 

MIKEPIN

Junior Member
I am not infringing their logo marks. They have nothing else.

Why should I give it up? I have a wonderful piece of land, I do not have the money to build on it, but I plan on using it in the future. I get many offers, but I am not interested in selling. So per your logic, I have to give it up?
 

quincy

Senior Member
I am not infringing their logo marks. They have nothing else.

Why should I give it up? I have a wonderful piece of land, I do not have the money to build on it, but I plan on using it in the future. I get many offers, but I am not interested in selling. So per your logic, I have to give it up?
You have not given us all the facts we need to assess your risk, hence my repeated suggestion to you to have the letter you received, and all facts relating to your domain name and the other company, personally reviewed by an IP attorney in your area.

You do not have to take that, or any other suggestion offered here. You are free to hang onto your domain name and see what happens next. Maybe nothing will happen. Maybe the company will just go away. Or maybe a complaint will be filed or you will be sued.

Here is a link to information on bad faith registrations of domain names, published by WIPO in December 2019: https://www.wipo.int/wipo_magazine/en/2019/06/article_0006.html

I wish you luck with whatever it is you decide to do.
 
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