Stolen Domain Name

[Tech77]

Jurisdiction

Oklahoma

Hello, I have a question about reclaiming an internet domain name.

I was travelling when my company domain expired and one of the extortion based DNS registrars registered it and is now holding it hostage.

I've researched options available to me. The main option relates to trademark infringement. You can get your domain back at no charge if they are infringing on your trademark.

My company name is not currently trademarked. Can I trademark it now and ask them to return it, or does it have to be trademarked prior to them taking it hostage?

My company has been in business for almost a decade and it would be clear that I am not trademarking it simply to claim / resell the name.

It would make you sick to find out how much they are trying to get me to pay to reclaim it. Any guidance would be greatly appreciated!

Thank you.

 

[adjusterjack]

Trademark protection attaches when you start using the trademark. Registration gives you another level of protection by being in the federal records.

Whether your company name is actually a trademark is something yet to be determined.

I suggest you study up on trademarks at the US Patent and Trademark Office website or hire yourself a trademark attorney to guide you through this, or both.

United States Patent and Trademark Office

 

[KyleW]

Who is your domain registrar? I have held close to 20 domain names with a few different registrars and each one of them had a 30 day period after expiration for the original owner to repurchase it before they released it back to the public for sale. But in reality once it is expired it is expired. I don't know if you would be able to try to throw out the term copyright since that starts the moment it is conceived. Us programmers use that a lot and works every time I do believe that they would have to be using it of course for it to be considered a copyright violation

 

[adjusterjack]

Um, Kyle, there is a difference between copyright and trademark. Copyright has nothing to do with tech77's issue.

Trademark might.

 

[KyleW]

Um, Kyle, there is a difference between copyright and trademark. Copyright has nothing to do with tech77's issue.

Trademark might.

Worth a shot to suggest since I deal with copyright regularly, granted its pretty much DMCA stuff and 99% of the time I get a site suspended until content is removed just by sending a letter to the host with no questions asked.

You may be able to use some techniques described here:
6 Ways to Recover a Domain Name from an Infringing Cybersquatter
If you message me I can gladly help you get all the information about the domain. Chances are the company that is holding ransom of your domain does not in fact own the DNS server (they need millions to run a data center) and their DNS provider probably wouldn't be too happy because it could hurt their IPs they own if it were to escalate.

Also get a new registrar. The one I use is Name Cheap. They have never let me down. Like I said before, they wait at least a month before they list it for sale.

 

[Tech77]

I've actually read a lot about the ways to retrieve a domain from cybersquatters. The only real recourse is TradeMark infringement.

My initial question (hopefully for a trademark expert) is, can I apply for the TradeMark and get the domain back if they took it before I had the TradeMark? Can I demand that they release it back to me once I have submitted the necessary paperwork? I read that it can take a year for a business name TradeMark to officially get approved. I obviously can't wait that long.

The company that took my domain has absolutely no intention of using my domain. They prey on small businesses that can't hire dedicated IT Staff to monitor domains. Once they grab the domain, they know you have to pay upwards of $10,000 to them because your e-mail and website are shut down. They have automated computer programs that buy every domain that has e-mail or a website attached to it. These people are truly evil.

Thank you for the responses.

 

[KyleW]

I highly doubt that you can file for a Trademark and try to issue a C & D letter to them especially if there is an approval process for it. Who's to say your Trademark gets accepted? That would also be unfair for the other party. You have to also remember that they purchased the domain legally and ethically. The domain lapsed and therefore they swooped!

If you can prove that you have a common law mark then you can possibly have some sort of case. Chances are, you will have to get some sort of court order to enforce the party to transfer the domain to you

 

[Michael Wechsler]

Sorry to hear about your domain name misfortune. Here are the cold, hard facts.

1) The squatter - as contemptuous as they can be - did not steal your domain name. You allowed it to expire. And furthermore, if it was so important to you then how do you explain the fact that you weren't aware of the problem if your email was interrupted for several weeks? My guess is that you may have only had a website up as your business card, perhaps no email, etc. The lack of interaction with your domain and website is the most likely explanation for you not realizing that the domain had expired and the usual 30-40 day period before it legally can be registered by someone else.

2) The Domain Sherpa article doesn't really provide any practical way to recover the domain, of which one of the methods is "do nothing." Summarizing the article in a sentence, unless you have a lot of money to litigate and the law on your side, it's not coming back.

The fact is that if you want to recover the domain under the UDRP (arbitration at ICANN) you need to overcome hurdles, which include bad faith. The problem you have here is that the company waited a period of what is likely to be in excess of 40 days before it legally registered the domain, the same as anyone else. And unless you can show a clear indication of bad faith, e.g. your competitor bought it and put up a porn site, you're going to have a major hurdle to overcome. Your common law trademark won't help you unless it's a rare exception. Why can't the company sell the name to someone else seeking to do business in a different state? So unless you have a rock solid trademark case that shows why a unique name belongs to you (e.g. Uniqlo, Exxon, Kodak) it's probably not going to help you in a practical fashion.

Net result is that you have the following options:

(1) Instead of doing nothing, try to set up a domain catcher so that if the domain name expires again, the vendor will try to register it on your behalf at first available date. May take a long time until this works, if at all.

(2) Author a cease and desist letter - or better yet, have a law firm draft one. Chances are good that this will fail and it will cost you money. But feel free to try. Do note that if you should lose with this method, buying it back will be significantly more expensive.

(3) If the domain is low demand, offer to buy it back. If the owner thinks he can wring you for more money, you can let him know that you were the one who the name had the most value. And if the offer isn't sufficient, you'll have to change the name of your company and the squatter will likely never see again and will lose this better offer.

(4) Try taking your chances in court or arbitration. Without a strong case you will lose both the case and plenty of money. A UDRP based challenge in ICANN should cost you at least $3,000 - 10,000 if you hire a law firm. You have to remember that unless it's a very clear cut case, research costs will be incurred in order to make the case and that adds up very quickly.

(5) Get a new domain name. Move on.

Good luck and sorry to hear about your domain name misfortune.