How can we protect a domain name and trademark internationally?

trademark vs. my domain name

• I think a company is trying to do an end-around to get my domain name, what can I do about it? I have a domain name that another company wants. They used to have a different name, but now they've registered the trademark. A few years ago I started to get occasional emails from someone asking about one of my domain names. I always had plans (not so well fleshed out) and didn't want to let it go. I never entertained selling it, never mentioned money or any bad-faith things like that. I did some Googling and found out about the company with the slightly-different name (think "Bob's X" where now they're dropping the "Bob's") existing in another part of the country (USA). Today I received an email from UPS about a package that was going to be delivered to the city I had found before, using an email address at this domain. I did a search at USPTO and found that they had received (I think) the trademark about six months ago. The frustrating thing is that I had explored getting the trademark based on my plans, even talking to a lawyer, but not following through. I'll likely be talking to this lawyer later, but I want to probe the hive.

• Answer:

  I am not a lawyer, but I had a similar experience, and here's what I learned. First, DO NOT contact or respond to anything from Bob's X. Second, save a copy of the email from whoever it was at Bob's X that wanted to buy your domain. Trademarks and domain names are related, but they aren't always linked--for example, see http://www.amazon.net and http://www.amazon.org If you own "Hoopdeedoo.com" and Bob's X decides to rename themselves Hoopdeedoo, or Hoopdeedoo.com, that doesn't mean you must automatically hand over your domain name. Much of what happens will depend on whether Bob's X can make the case you registered the domain names in bad faith--that is, if you registered the domain names with the intent to sell them back to Bob's X. In your case, since you purchased the domain name before Bob's X renamed itself, they're not going to be able to prove you registered the domain in bad faith. Further, if they offered to buy it and you declined, that's more proof you didn't register it in bad faith. Check to see if Bob's X has filed anything yet under the Uniform Dispute Resolution Process (UDRP) with the domain name authority, ICANN. If they did, you'll see something http://www.icann.org/udrp/proceedings-list.htm My guess is that they'll try to do one of three things: a. scare you into giving it to them, b. start a negotiation, or c. create a history to show they tried "in good faith" to negotiate. If Bob's X wanted to actually force you to give the name, they'd file it with UDRP. I believe they're hoping to do it on the cheap because: a. they think you won't recognize/don't know your rights, or b. they want to get this done amicably and quickly. If they decide to push this, you will likely have to go though the proceeding, depending on two things: a. What you're currently doing with the domain name, b. Because there is the argument that you might be squatting (due to "a"). http://www.icann.org/udrp/udrp-policy-24oct99.htm According to the rules, they cannot hold you for bad faith. See, "Evidence of Registration and Use in Bad Faith" at the above URL. I also believe you can show legitimate right (see "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint" at the above URL) without much difficulty. Ultimately, it comes down to time and money, and how much you and Bob's X are willing to spend on lawyers, but in all likelihood, Bob's X would eventually back down or lose this in the UDRP (Uniform Dispute Resolution Policy). You could fight this thing to a standstill and be exactly where you are today, or you could sell them a promise that you won't use it for competitive purposes, or lease them the redirect--but you would need a lawyer for those two options. In my case, I contacted the http://www.eff.org and friends who put me in touch with lawyers who specialized in trademark disputes and domain names. I also recommend reading http://workbench.cadenhead.org/news/3095/my-battle-mgm-over-wargamescom%20--his is a similar story, and his article has a lot of excellent advice. Feel free to contact me if you'd like me to recommend a lawyer. Good luck.