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The universe works in mysterious ways...
After my last thread, I was hoping I could stay clear of TM issues forever! But I just found out that someone has registered my (e-commerce) webstore domain with a one letter typo. Its a very discreet typo, and they could well be receiving my misspells.
Itstates in the WHO IS info to contact them directly if anyone has issue with the registration, providing trademark OR evidence of use of the common law trademark
in question. It appears that my site was registered more than a year before they registered theirs. So, is it advisable to contact them through WHOIS? Or is there another protocol that would be suggested? Figured I better ask after my faux pas of earlier this week.
Geeez....
Tanya
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Tanya,
Do you own the trademark for your domain? If you do, it would be easier...
Zach
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hey're probably trying to steal some of your thunder
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zach Wrote:Tanya,
Do you own the trademark for your domain? If you do, it would be easier...
Zach
No, I don't own the TM. So do I go ahead and contact them through the WHOIS; providing my initial registration of the correctly spelled domain? Hoping they'll just hand it over? Or is that a bad idea?
Thanks Zack....
Your opinion is valued.
Tanya
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Sure, I would go ahead and email them.
Be formal in your email. Contact him as a representative of your company, and not as an individual who registered a domain. Say that you are requesting that they hand over the infringing domain to you, or that you will be forced to contact an arbitration centre.
lol, its funny, you're always dealing with trademark cases, but this time on different sides of the argument.
Zach
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If you have a registered TM as a website, and the other person as a misspeled version, then you both have the same right to have your own site using someone else's TM. If you contact them, then what if they contact the people owining the TM??? You might loose your site. Of course I'm not an expert!
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Writing them first would probably be your best bet. They might let go of the domain without problems if they haven't developed it yet.
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Don't people specifically misspell words as a way of avoiding legal problems?
I'd be very interested to hear how this turns out, and best of luck but are there any precedent setting cases similar to this?
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When do you go to the site is it a knock off of yours? Do they sell the same things or is it just a landing page? Like Zach said if they haven't done much work on it they most likely will not fight about it. Just sound like a company and not a person, they will think you have the time and money then to sue them.
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Great advice from all on this issue. Thanks guys and gals. I wrote the email, very professionally and sounding like I was a fortune 500 company. They turned it over immediately! I listed evidence of my common law claim to the domain...and they didn't even question.
Here's a cut and paste of what they said. I'll XXXX out their corporate name.
"We are in receipt of your e-mail concerning the domain name FOLLOWYOURBLISSTORE.COM. XXXXXXX., takes extreme steps to avoid registering domain names that incorporate names or trademarks of others. After reviewing your email and investigating the situation, we have determined that this domain name was inadvertently not blocked by our initial registration procedures. The domain was picked up by our secondary procedures."
"We have put the domain in to a status of 410, which means the domain appears to not be valid and the page will not display. This domain is available for immediate transfer. You can initiate a transfer from your registrar of choice, and we will approve the transaction. There is a 60 day period from the initial registration of a domain where the XXXX XXX XXX, prevents any transfer of a domain."
I'll be updating on the "other" TM issue I'm involved with shortly. That appears to be going smoothly as well.
I hope that someday I can become knowledgeable enough to help somebody else....instead of the person always looking for help!
Thanks again,
Tanya
