Liability & Legality

**skyhawk133** · 09-21-2006, 07:22 PM

I started my website on February 28, 2001. At that time, dreamincode.com was registered, so I registered dreamincode.net. Today, I filed for a US Trademark for the mark: </dream.in.code>

How hard will/should it be to get the owners of dreamincode.com to fork it over. They are simply squatting on the domain and have requested over $3000 to sell. I have read that if you have the trademark, you have a legal right to any domain with that trademark in it.

**ltn1dr** · 09-21-2006, 10:06 PM

I thought that since they've owned the domain with your trademark in it even before you regged the domain, they had some protection on it?

**kindsvater** · 09-22-2006, 12:53 PM

Skyhawk, I think you've read the law wrong.

You can't go finding websites, register as a trademark their name, and expect them to forfeit their domain to you.

Also, keep in mind that trademarks are much more limited than copyright. What I mean is that with copyright you can keep someone from making most uses out of your work. Not true with trademark. With trademark one important goal is to prevent customer confusion to prevent 2 companies serving the same market from using the same name.

For example, the word "Delta" can be trademarked by both Delta Airlines and Delta faucets. The word could also be trademarked by a pencil sharpener company. Who gets the domain delta.com? The first to register. Or, whoever has the deeper pockets to buy it from whoever registered first.

Cybersquatting is concerned with companies who find a valuable trademark that someone else has already registered, and then trying to keep them from having a domain using that name.

Finally, for most trademarks there is not a monopoly on using a trademarked term in a domain. That is one reason (among several) why PayPal, Inc. cannot prevent someone from registering the domain paypalsucks.com

**skyhawk133** · 09-22-2006, 01:01 PM

If I have a legitimate business operating under the mark dream.in.code and they registered, or took possession of the domain after my mark was in use, and after my original domain was registered, shouldn't I have a right to the domain?

I own dreamincode.net, registered on 02/28/2001
They own dreamincode.com, registered on 11/06/2003

Another company owned dreamincode.com prior to them, when it expired, they were able to snag it before me. When/If I get the trademark, since they do not own a trademark to the name, or have a business with that name, it seems I would have rights to the domain at that point.

I understand you can't just register a trademark and go taking domains. But if you have a legitimate business/brand, that is trademarked, and a domain squatter has another tld version of your brand, you should have the right to that domain.

I realize if multiple companies have the same name, the first to register it have rights to the name, this situation doesn't seem to apply to that logic... am I wrong?!

The company that owns the .com version has only gone through 1 documented arbitration. They owned investtools.com and the company InvesTools made the case that investtools sounded similar and violated their trademark. InvesTools lost the case because simply sounding like the trademark doesn't mean you have rights to the domain. In my case, they own the actual name of my mark, letter for letter.

**007** · 09-22-2006, 01:55 PM

By getting a trademark, you can't automatically get the domain, BUT, you do now have rights to do whatever you specified in your trademark ap that you do, such as web design, hosting, or whatever you put down.

If they start a similar site on theirs now then that's when you can get them. Until then it will be hard since they owned the domain before you owned the trademark.

**BamaStangGuy** · 01-31-2007, 04:51 PM

sky I am looking to get a trademark on my Mustang site. Hit me up on aim sometime so I can pick your brain about the best way to go about it

**Mike** · 02-05-2007, 04:20 PM

Been through an issue regarding trademarks, and as stated in an earlier post, I don't see any way that it will give you rights to the domain name you are trying to get.

I was approached a little over a year ago by a website that told me I had to change the name of one of features on my site because they had tradmarked the name. The owners of this website began constantly emailing me, threatening to sue me, and ultimately hired a lawyer to draft up a scary letter to send to me. At the point I got the letter, I became annoyed.
I sent a letter back to the law office telling them that if they ever sent me any further letters that I would sue them for harassing me

. I also immediately emailed the website owners and told them the same thing.

There really is not a whole lot of power that comes with a trademark.

**imported_Luke** · 02-06-2007, 06:05 AM

personally I would buy that domain, the .com will benefit you more and lets face it with a site like your .net, $3000 could be gained in a few days from donations.

**handsome rob** · 02-06-2007, 11:20 AM

dreamincode.com wins because they had it first. And it would probably cost you more to take it to court (and probably lose) than it would to just buy the domain. Make an offer below their asking price under a different name and let them sleep on it for a while.