get a crowdfunding campaign to fight the evil corp on the courts
get in touch with lawyers dealing with IP/trademarks
you can have a brief talk w/ them to discuss options before making any decision :)
Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
11–20 of 293 posts
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#12While this is definitely a bunch a hot air, unfortunately they could frivolous sue you to simply win on financial grounds alone (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs).
I'd evaluate what your endgame is. If your endgame is to keep the domain then I'd get a lawyer in order to make it clear that you will respond to legal challenges (and, yes, the bill is going to run up). If you were willing to sell, for a price, then you should try to figure out how much a legal challenge would cost them and set a price a bit higher than that.
Is it fair? Absolutely not, but the US legal system is set up so that those with the deepest pockets often win. It isn't a fair fight for normal citizens, and even having the law on your side is often not enough because it is a financial battle more than a legal one.
Either way may be wise to lawyer up today, either for a better selling price, cause them to back off entirely, or move it into the "bury you with costs" phase of bullying.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#13If you haven't registered the trademark, does holding the domain have any legal merit?
"In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file."
https://www.legalteamusa.net/trademark-law-first-to-use-v-fi...
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#14As you said "solicitor" I'm guessing you're not in the USA.
If you are in the USA, the law is on your side: just because they registered the mark doesn't take away your rights.
In addition, if they are doing something different from you (or perhaps you're using the domain for non-business purposes) they have no claim. You can open McDonald's garden shop (even if your name isn't McDonald) and unless you made it look like a McDonald's restaurant (trying to cause confusion) it's none of the restaurant company's business.
Best, unfortunately, is to get a lawyer. If your country has a "small claims" court you could even sue them to get back your lawyer costs, but those are likely to be small in any case.
Good luck!
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#15Talk to a lawyer and be prepared to spend money if you want to keep it.
First use is a strong defense, but you will need to defend it. If you have similar products and can show first use, as you claim, perhaps negotiating a sale of your entire business including the domain would be something to offer them.
Usually this kind of tactic happens because they've looked at you and guessed you don't have financial capital to defend yourself. Unfortunately, because it's very difficult to prove they're acting in bad faith, there's likely no way to recover your costs of defense.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#16If you haven't registered the trademark, does holding the domain have any legal merit?
You don’t need to have registered. You get trademark ownership automatically without any registration if you are the first to use a distinctive mark in interstate commerce. Having registered can help assert your claim though. IANAL.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#17Dont know what country you live in but check the categories the trademark was linked to. If they are in the same line of business as you and the TM has that category that covers the line of business you are in I would be questioning the trademarks office for awarding the TM to the other entity.
TM's are cheap so its an easy trick and a lawyers letter doesn't cost much either, but its a legal game you may well be forced to play, because they might go to the domain registrar and try it on with them to get your domain.
Unfortunately these are the additional cost we can be forced into playing if someone with more money wants something from you like in this case your .com name. You could also see if your domain registrar as some sort of arbitration which could keep costs down or lower than using a lawyer. I think divorce lawyers best typifies some of them thrive on disputes. Good luck!
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#18>Is this correct? Sounds ridiculous to me.
It is ridiculous, and the only reason for this is because they have no legal right to the domain name.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#19If you haven't registered the trademark, does holding the domain have any legal merit?
If he's doing business under that domain name, he is using it as an unregistered trademark and still gets some protection from that. In some cases, including when someone new starts a similar business with the same name, it can have the same force as a registered trademark.
Re: Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET
#20They might be using scare tactics hoping you'll hand over the domain name without question. But I wonder if they have a case. My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down. If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than…
In particular, the UDRP rules include the following:
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(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,
[...]
(3) why the domain name(s) should be considered as having been registered and being used in bad faith
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