Need Help: Trademark Domain Issue

if they registered it 14 years ago and it does not promote AAAA's stuff legally you cant have it as it was registered before they existed.

remember the nissan law suit http://nissan.com/ they tried to bury them in legal fees with their mighty corporate power and lost

On which grounds are you going to file a UDRP since you admit the name is not infringing ?
Besides copyright and trademark are two different things.
You have at least two options:

• get qualified legal advice - which probably isn't going to help since you have no case
  
• try to acquire the domain name

You obviously aren't a legal expert, so I wouldn't go throwing away money. You don't have to file a copyright with the government for it to be enforceable...it is copyrighted the minute it is made. Regardless, if they owned the domain 10 years before the company you have even existed and are just using it as a login/landing page, I don't see how you would win. You can't just file a trademark and then go and take peoples domains that were registered a decade earlier.

Thanks for the replies...I am not a legal expert but Im often the go-to guy for people/businesses before they seek lawyers. This person was seeking an attorney for this, but I told them to let me take a look at it first to see what I can do before they spend money. Right now I'm just trying to negotiate a price with the domain owner. As I've stated I don't think the corporation have any legal grounds to take the domain name legally. I was hoping there was a special scenario from previous cases that someone may bring up that may shine a light on an area I might have missed.

I also said copyright wasn't the issue, the issue is the trademark and I couldn't find any grounds to file a UDRP complaint except for the fact that it's a trademark term. But I figure that wouldn't hold up in court because it doesn't meet the elements of trademark infringement. I just wanted to try everything before telling this person whether or not it's worth hiring a lawyer.

Lowesthost said:

if they registered it 14 years ago and it does not promote AAAA's stuff legally you cant have it as it was registered before they existed.

remember the nissan law suit http://nissan.com/ they tried to bury them in legal fees with their mighty corporate power and lost

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Big thanks to you, this is the kind of stuff i was hoping to get, previous cases

first comes - first serves

Lowesthost said:

if they registered it 14 years ago and it does not promote AAAA's stuff legally you cant have it as it was registered before they existed.

remember the nissan law suit http://nissan.com/ they tried to bury them in legal fees with their mighty corporate power and lost

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Very interesting development in this case.

My advice would be not to waste money on lawyers instead try to make a deal. To my understanding, from the info you have given, there is a very strong chance of RDNH if you go for UDRP.

bashariqbal said:

My advice would be not to waste money on lawyers instead try to make a deal. To my understanding, from the info you have given, there is a very strong chance of RDNH if you go for UDRP.

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Thanks for your response I already told them not to get an attorney involved and register an alternative.

todaygold said:

You obviously aren't a legal expert, so I wouldn't go throwing away money. You don't have to file a copyright with the government for it to be enforceable...it is copyrighted the minute it is made. Regardless, if they owned the domain 10 years before the company you have even existed and are just using it as a login/landing page, I don't see how you would win. You can't just file a trademark and then go and take people's domains that were registered a decade earlier.

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I didn't want to respond because I didn't feel like arguing but you DO have to file a copyright with the government if you decide to take it to court, otherwise it would simply be hearsay. Here's the government website to back my claims, unless there is a clause I do not know about then kindly point it out to me so I can be better at what i do.

http://www.copyright.gov/help/faq/faq-general.html#automatic

larryscott2559 said:

I didn't want to respond because I didn't feel like arguing but you DO have to file a copyright with the government if you decide to take it to court, otherwise it would simply be hearsay. Here's the government website to back my claims, unless there is a clause I do not know about then kindly point it out to me so I can be better at what i do.

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Not really sure where it says it has to be registered to defend against a lawsuit. "Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within five years of publication, it is considered prima facie evidence in a court of law."

So it says registration is recommended and obviously having a registration will help provide better evidence. With that being said, the copyright holder in this case isn't suing you, they are not claiming you used their work...they would be the ones being sued by you according to your OP.

While a copyright holder may have trouble bringing a suit or may even have the suit dismissed if they try to sue you...the reverse, defending against a lawsuit from you should be simple because they have an unregistered copyright, whereas you do not have any copyright at all.

larryscott2559 said:

I didn't want to respond because I didn't feel like arguing but you DO have to file a copyright with the government if you decide to take it to court, otherwise it would simply be hearsay.

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That's just simple nonsense.

Registration is not required in order to own and enforce a copyright.

What's surprising in this is that you don't seem to have understood the page to which you linked.

"Registered works may be eligible for statutory damages and attorney's fees in successful litigation."

In the US, one can sue for copyright infringement and seek a variety of things - injunction against further publication, lost profits, the infringer's profits, and so on. If the copyright is registered, one can add on certain defined statutory damages and also seek attorney's fees. But that doesn't mean that you have to have registered the copyright in order to sue for copyright infringement. It only means that registration will qualify you for certain categories of damages in an infringement suit.

Similarly, it is not "hearsay" to present evidence of one's ownership of a copyrighted work. Again, while registration confers some procedural advantages in proving ownership, it is certainly not "hearsay" to prove ownership of a work absent registration.

jberryhill said:

That's just simple nonsense.

Registration is not required in order to own and enforce a copyright.

What's surprising in this is that you don't seem to have understood the page to which you linked.

"Registered works may be eligible for statutory damages and attorney's fees in successful litigation."

In the US, one can sue for copyright infringement and seek a variety of things - injunction against further publication, lost profits, the infringer's profits, and so on. If the copyright is registered, one can add on certain defined statutory damages and also seek attorney's fees. But that doesn't mean that you have to have registered the copyright in order to sue for copyright infringement. It only means that registration will qualify you for certain categories of damages in an infringement suit.

Similarly, it is not "hearsay" to present evidence of one's ownership of a copyrighted work. Again, while registration confers some procedural advantages in proving ownership, it is certainly not "hearsay" to prove ownership of a work absent registration.

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hopefully you are a lawyer

frank-germany said:

hopefully you are a lawyer

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LOL

frank-germany said:

hopefully you are a lawyer

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Yeah, he's "something" like that...

The dude abides!

ok

It is very useful tips to sharing the perfect trademark domain issue.

The corporation has trademark. lets call it "AAAA" back in 2010. The domain holder of "aaaa.com" has registered the domain name 14 years ago.

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Without knowing the specifics of the case (i.e. if domain is a generic keyword), IMHO it seems that filing a UDRP in this instance would likely be approaching a finding of reverse domain name hijacking. Waiting 6 years after filing for trademark to file a UDRP opens potential for respondent to invoke doctrine of laches defense; compare here: http://domaingang.com/domain-law/do...ul-use-in-fighting-back-udrp-for-dynocom-com/

laches

1. unreasonable delay in making an assertion or claim, such as asserting a right, claiming a privilege, or making an application for redress, which may result in refusal.

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See this case, where a finding of RDNH was found: http://www.thedomains.com/2014/09/3...name-hijacking-as-esqwire-com-wins-11-in-row/

P.S. I'm not a lawyer, this is not legal advice.