Someone Held a Domain That Contains My Trademark. I Want It. Its Price is 50K!



Colman
Anyone have experience with domain name squatters? We are thinking on rebranding and nicheing down even more. The name we want isn't being used, just held. It's been held by this individual for 6 years. I made an offer and they wanted like 50k, I already have the alts, but this domain name makes more sense.
I'm at the point where I'm thinking about trademarking the name (it's not taken) to force the guy to sell it or even give it to me.
Thoughts?
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Friar
Don't waste your time/money trademarking it, at best you'd have to take them to court and you may not win. You can check with an IP lawyer, but I'm pretty they'd win just because they've owned the domain longer than you'd have owned the trademark. Especially if it wasn't your company name to begin with.
Pageni
At that point just pay the guy 50k lol, still would be cheaper.
Chris Edwards 🎓
Trademarking after he bought it will not work, in fact he could challenge the trademark.

Truslow 🎓
True – but he probably wouldn't win the challenge (though he likely wouldn't be forced to give it up either). In order for him to challenge the trademark and win, he'd have to be using it for something. You can't just register a name and not use it for something. (Otherwise that would be a thing – people would just be registering every word or phrase to claim it as their own). For a trademark registration to be valid, it needs to be registered AND involved in the act of performing a trade.
Now… since he registered first, he wouldn't have to give up that domain though. A good lawyer could probably get a judge to force them to offer a fair price on it based upon current and potential value, though. That would bring the price down, but at the cost of spending maybe 5 figures on the legal fees.
DonMarks » Truslow
Yes you can, domains have been owned this way for 25 years.
Truslow 🎓
You can what, specifically? And owned what way specifically? You lost me here.
Truslow 🎓
Actually… with a bit more reading here…
IF you have all the other domains AND you get a registered trademark for your brand (you have to get the trademark) then that squatted domain becomes yours. If they won't give it to you – you can do the expensive lawsuit route or you can do a UDRP through ICANN which is cheaper and quicker, according to this article.
https://smallbusiness.chron.com/legally-buy-trademarked-domain-40603.html
Again… the key is that you own the trademark on the brand name first. And, for those playing along at home – this is US law, so in other countries ICANN is probably the only way to go and may be a bit more difficult.
ADDED: Also… I would imagine that it would have to be a situation where they are squatting and not actually using it. If they are using it for commerce – then things would be different, methinks.
Michae » Truslow
I don't think it's even that cut n dried. the other guy could be planning to use that name in an unrelated Trademark class.
Colman ✍️ » Michae
He's been holding the domain for 7 years I doubt it
Truslow 🎓 » Michae
It shouldn't matter what he's "Planning" to do… he hasn't done it yet and he doesn't hold the trademark. If he was ALREADY doing something – then yeah.
Michae » Colman
Doesn't matter. In the US (and most countries are similar) you generally register for one class of trademark. Oh, you can register for more, but there are 45 of them not counting subclasses. And guess what? That protects you a bit within your registering country.
Want international (WIPO)? That's something that needs to be arranged AFTER you get your country's trademark (which takes around 6 months in the US, and yes, you generally need to hire an attorney with a service or they will often autokick it back when you file it yourself…attorneys cover attorneys in the same field when dealing with the .gov).
Michae
Theoretically I can start McDonald's Farm and Feed and there isn't shit that McDonalds Corp could do about. In actuality, they would make me insolvent due to legal fees and challenges. But the system still works as intended with small players…same/similar name? Different trademark classes? No consumer confusion (this part is key)? No problem.
Not a lawyer but I did ace business law from bachelors through MBA. And have stayed quite a bit at Holiday Inns. I got their points card.
Chris Edwards 🎓 » Truslow
He could be using it for email.
I have emails on domains where I have do website, I'd argue that I have been using the brand on those domains.
But I agree that it looks like domain warehousing.
Truslow 🎓 » Chris Edwards
RIght – if he can prove he's using it – and engaged in trade/commerce with it… then he has something on his side.
Charlie
this is not true. You own the domain. Period. And you're talking to someone who shot down Amazon, Facebook, and others before so don't even try. You own it = you own it. That doesn't mean you own the trademark or will win that battle.

Heng
They would hold onto the name.
Either they purchased it at cost, which they can hold it as long as they remain being patient, or they would at least want to double the money they won from the auction.
You can try to negotiate if you are willing to set a budget on it.
They would ask for a ceiling price for sure.
Green
If he had the domain before you trademark it, you are wasting your money and time. Move on if you don't want to pay his asking price.

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Johnston
Trademark is the way to go. Speak to Rob, he owns Trademarks Australia. He'll do a free search and advice and a quote for you and he's far easier to deal with than the big companies. You can contact him by using his online form at https://www.trademarksaustralia.com.au
His site is not flashy and getting updated, he knows his stuff though.
TRADEMARKSAUSTRALIA.COM.AU
Trademark Search Fees – TradeMarks Australia™ since 1997

Green » Johnston
Genuine question, so you can trade mark a name just to take the domain name they already owned even before the trade mark was in place?
Johnston » Green
Registration of a business name, company name or domain name does not in itself give you the legally enforceable right to prevent others from using similar names \- only a federally registered trademark gives you that right. I'm not an expert but it's best to have the trademark process underway first.
Colman ✍️ » Green
And the owner has no proof of it being used (in any business way) it's just being held.
Mawji » Colman
Correct, owning the trademark wouldn't force them to give it up to you unless you've got an attorney that believes they can make it happen.
I'd imagine if Disney trademarked Something today they'd likely litigate their way into owning the domain too 😂
Kris » Colman
Doesnt work like that. Its theirs. Doesnt matter if they don't use it. Doesnt matter if you trademark. https://finance.yahoo.com/news/elon-musk-bought-tesla-com-153725895.html
How Elon Musk Bought The Tesla.com Domain Name
FINANCE.YAHOO.COM
How Elon Musk Bought The Tesla.com Domain Name
Cory » Johnston
Trademarks don't go very far imo. So yes trade mark and service marks help but it's not going to change much. Pony up the money or move on

Richa
It's not "squatting" unless they registered the name in order to infringe on a known mark. Udrp very unlikely to be successful even if you managed to register the mark now. More likely you would be found guilty of Reverse Domain Name Hijacking (RDNH). Best thing is to negotiate. A 50k asking price might result in a 10k sale. Quite possible.
Halverson
There is already precedent for this with WIPO, you might check previous case results to see if any line up w your situation.
https://www.wipo.int/amc/en/domains/decisionsx/list.jsp
I'm not a lawyer, and you should establish representation if you want proper legal advice, however my interpretation of previous disputes is that you would need to establish that you are already using the name for commercial purposes.
WIPOINT
Decisions: No results were found to match your search.
Charl
Not a lawyer, just a media producer and startup founder with a lot of experience…
A trademark, at least in the USA, can only be established through use, typically use in commerce.
Establishing a trademark by using it in business wouldn't help you get the domain, but could potentially (if filed and managed properly) prevent the domain squatter from using it to imitate your brand.
Trademarks have very different rules and properties from copyrights and patents.
But regarding the domain squatter, imagine this is a business person who has placed a large number of low cost bets. They put a $50k price tag on it hoping you'll pay, but they would typically settle for less. If the sunk cost is $15/year for 5 years, that's $75. Now give them a 20x return. $1500. That should be your target, but I'd start by pitching a $900 bid and working up. The problem is though, you've already expressed interest, so they know you want it, so the negotiation may not be simple.
Fowler
https://smallbusiness.chron.com/trademarked-domain-back-cybersquatter-61710.html
The challenge will be if he sees it coming, he sets up some kind of service or biz however small to it. Then trademarking the term will be much more difficult b/c it will be considered already in use especially if he guesses the sector. A good domain squatter will tie a simple service (even fictitious) to it to be providing biz. The email is a second-level obstacle, not as defendable as "I have a biz which offers XYZ in that name."
Example: They can set up an auditing service for sites in the niche for whatever that name relates to. PuroNine is the name you want for your organic dog food company???? All one has to do is say PuroNine is a company providing audits and advisement for pet food and dog food websites for optimal performance.
How to Get a Trademarked Domain Back From a Cybersquatter
SMALLBUSINESS.CHRON.COM
How to Get a Trademarked Domain Back From a Cybersquatter
Hartzer
If you trademark the name you cannot force the person to turn the domain name over to you. It doesn't work that way. If they registered the domain before you got the tm then they still can use the domain.

Brett
Anyone can use any domain. Doesn't work that way.

Kishore
Same, for mine this one asked me for 90k€. And he's been holding it since 1999. Already discussed with domaining experts. They said their ask is ridiculous but there ain't any other way except him forgetting to renew it. 🤣
Cory
You will have to pay. ICANN takes like a year just to review it and they will side with owner
Charlie
You're trademark carries absolutely ZERO weight.
Negotiate with the owner and just buy the domain. You'll spend more in lawyers.
p.s. from someone with actual experience in this domain world and having fought both Amazon and Facebook regarding similar. So yes, if you've got 6-figures to blow, do it. Or pM me and I can save you the hassle.
Carlo
Besides, everything is written here. It could take 1to 2 yrs for the trademark if you get it. Then you have wasted a couple of thousands and 2/years only to waste more time in courts. You might get what you want $10K and four to five years later – congrats, you win.

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