[itistoday]

So my trademark has finally been approved, but the domain name of it isn't available. It's been unavailable and "under construction" for over a year, with no content. Is there any way I can get the owner to give me the domain name because I've trademarked it? (BTW, I've trademarked it under the "intent to use" in the future).

Thanks!

[Socially Awkward Solo]

You might have to get into a court battle over that one and it won't be pretty. It sounds like he had the domain long before you filed for a trademark.

[saddino]

Originally posted by itistoday:
So my trademark has finally been approved, but the domain name of it isn't available. It's been unavailable and "under construction" for over a year, with no content. Is there any way I can get the owner to give me the domain name because I've trademarked it? (BTW, I've trademarked it under the "intent to use" in the future).

Thanks!

Like everything else in law, it depends. ICANN will enforce trademark protection (per the UDRP) if the owner of the site in question is using it in "bad faith." So, if you can prove "bad faith" to ICANN, they'll force the owner to reassign the domain to you.

The problem is, you menton that it is simply "under construction" which does not indicate "bad faith." If the owner was a competitor who was purposefully trying to keep you from keeping it, or someone who was trying to extort large sums from you, or was trying to gain finacially from the site (by confusing your customers), then you'd have a case.

Otherwise, your only option is to ask the owner to sell it to you. You can then inform the owner of the UDRP, specifically section 4b which stipulates that the owner cannot ask for "consideration in excess of your documented out-of-pocket costs directly related to the domain name." In other words, you ask nicely to have the owner sell you the domain for a fair price. If they come back with some crazy figure, then you can file a complaint.

Keep in mind that this is a complicated process, and most businesses use an IP lawyer specializing in ICANN disputes. Hiring counsel is up to you, but either way, it's going to cost either your time or your money. You have to decide whether or not the domain is worth pursuing if the owner doesn't want to sell it to you for a fair price.

[itistoday]

Originally posted by saddino:
Like everything else in law, it depends. ICANN will enforce trademark protection (per the UDRP) if the owner of the site in question is using it in "bad faith." So, if you can prove "bad faith" to ICANN, they'll force the owner to reassign the domain to you.

The problem is, you menton that it is simply "under construction" which does not indicate "bad faith." If the owner was a competitor who was purposefully trying to keep you from keeping it, or someone who was trying to extort large sums from you, or was trying to gain finacially from the site (by confusing your customers), then you'd have a case.

Otherwise, your only option is to ask the owner to sell it to you. You can then inform the owner of the UDRP, specifically section 4b which stipulates that the owner cannot ask for "consideration in excess of your documented out-of-pocket costs directly related to the domain name." In other words, you ask nicely to have the owner sell you the domain for a fair price. If they come back with some crazy figure, then you can file a complaint.

Keep in mind that this is a complicated process, and most businesses use an IP lawyer specializing in ICANN disputes. Hiring counsel is up to you, but either way, it's going to cost either your time or your money. You have to decide whether or not the domain is worth pursuing if the owner doesn't want to sell it to you for a fair price.

Wow, that's very helpful, thanks for the advice!

[JHromadka]

http://ask.slashdot.org/article.pl?s... /. discussion may have some related information.

[cpt kangarooski]

Of course, to be honest, you've acted pretty stupidly.

What you should have done was work out a large list of names you'd be happy with (and which should be fanciful if possible), then conducted domain name and trademark searches on them. When you find one that's not in use, register the domain name immediately, and file your trademark registration, which will probably get approved unless you've chosen a bad mark.

Had you done something like that, you wouldn't be in this fix now.

Oh, and don't forget that you need to use that mark in the near future, or you'll lose it.

[Eriamjh]

Don't forget about the .net and .us domains. Not all the names are taken.

Can you tell us what domain you were looking for?

[Captain Obvious]

Speaking of ignorance.
No, most likely you are screwed. And it is your fault for not being smarter.

The fact the domain owner is not displaying content could end up meaning very little in the end.
First of all he could be using the name as a suffix for an email or have some other manner of use. Second, �yourname� software (let�s just assume that�s what we are dealing with for arguments sake) may have been approved by the patent office but that does not mean that the domain is not owned by the proprietor of �yourname� restaurant who happens to have gotten state registration a decade ago for his business. So prior use may have been established long before you came up with your concept.
The fact you did a search and found this domain in use before you applied for your patent could hurt you in court. You should have spent the past year trying to acquire the domain or at least researching your options instead of just getting to it now.
Your patent also has only been filed as an �intent to use�
Any number of things can be done by the domain owner to stop you from acquiring the rights to the name because of that as well. The fact you have no product in the market using the name means a judge sees little reason to grant you rights to it when you could just as easily name the item something else.

If its not owned by someone with a business use for the name but instead by a professional squatter you better have the money to pay his price or attorney fees. He will probably be quite experienced in drawing out a legal battle for the name. So having the ability to go the course will be important if you are serious about getting the rights. Your ignorance in creating your business plan shows you probably don�t have the background or money to go this length and should probably just pay the owner what he is asking or find another name to use.

[Socially Awkward Solo]

So in summery of what Captain Obvious said (which was really correct) you shouldn't have registered a TM when you didn't own the domain. Don't think registering a TM can force a domain holder to turn it over if he has had it BEFORE you.