Domain Name Takeover

[randygilchrist]

My jurisdiction is: California

I have a website, a domain name, and a product all possessing a name that I have recently registered a trademark with that is now completely official.

The issue: another website/company that actually existed before mine has the same name as my product/domain name (but never bothered to register it when they had the chance) still possess the same name for their product/service and an almost identical domain name to mine.

At this point, I would like to get their domain name from them now that I hold the official registered trademark. How would I go about wrestling it from them? What are the steps? I don't really think their business is a big threat/competition to mine, I just want their domain name. What are the steps/options here?

 

[Michael Wechsler]

First - is your trademark approved already or did you just register the mark?

Let's assume there is no opposition and the USPTO doesn't find this other company. Yes, you may have a federal trademark but federal law would seem to allow this other company to continue to enjoy the benefits of their state and common law trademark rights. They have a priority of prior use in commerce and you couldn't simply usurp them by starting your business and registering for a federal trademark afterward. If memory serves correct, on the trademark application you are also supposed to affirm that there are no other known users to the name.

If this other business has been around for a while, you should probably expect these people to go to an experienced trademark attorney with regard to your claim of paramount federal rights instead of just handing it over to you.

As this matter is fact specific, you definitely need to speak to an experienced trademark attorney before you make any decisions on how to approach a potential acquisition of this domain name.