Legal question

**South** · 06-08-2005, 07:54 AM

In 2004 I registered the domain mustangmax.com. I used it for Ford Mustang content with the final intent to run a classifieds for Mustangs and sell aftermarket accessories.

A fairly large animal feed company has since registered the name Mustang Max as a trademark and has contacted me wanting to purchase the domain. The offer was pathetic but the lady who signed herself as "legal assistant" attached trademark notice and politely implied that I was obligated to release the domain since they held trademark on the name.

My thought is that since I held the domain before there was any trademark, and since my use of the domain is completely unrelated to their product line, meaning my use of the domain will not benefit from the trademark, I am under no obligation to release it.

Anyone know anything about this? I don't mind selling it, but I don't want to practically give it away if I'm not obligated.

sem4u · 06-08-2005, 08:03 AM

I am no legal expert but as you owned the domain name before the name was trademarked, I believe you have a right to keep it.

What I would do is hang on and see how much they are prepared to pay for the domain name. Then sell when a decent price is reached.

frances · 06-08-2005, 08:16 AM

i dont claim to be a legal expert either - however, as far as i am aware...if their trademark is still within the 3 month public display period then you can appeal against it and they will be unlikely to success in registering it.

Also if you have proof that you bought the domain before they registered their trademark then you should own the copyright to that name, and could take it further if you wanted to.

If you have an organisation such as "Business Link" over where you are (that's what we have in the UK) then they could probably offer you free advice and perhaps help towards funding legal costs -?

imaginemn · 06-08-2005, 10:50 AM

You might have a hard time retaining access to this domain name. This is why.

You would have started using the domain name on (accoring to WHOIS info):

Domain Name: MUSTANGMAX.COM
Created on: 09-Feb-04

The submitted a trademark registration on (according to the Trademark Electronic Search System (TESS):

Filing Date July 18, 2003
Published for Opposition April 27, 2004
Registration Date May 31, 2005
First use in commerce was: Feb 01, 2003

The typicaly waiting period for trademarks can be 1 - 2 years depending on how generic the trademark is and if anyone opposes it when it's published for opposition. You would have to prove that you have been using this name prior to them filing for the trademark (July 18, 2003) and they would have to prove that they were using it prior to your date, etc, if it ever went to court.

imaginemn

**South** · 06-08-2005, 01:58 PM

OK. Even if they were able to keep me from using it they can't force me to release it can they. Registering a trademark doesn't give you automatic ownership of the domain does it?

frances · 06-08-2005, 03:02 PM

hurm... i dont think you are obliged to release it to them, so perhaps you could get the offer up to a price you are happy with, and then let it go perhaps?

SN3 · 06-08-2005, 04:05 PM

It's a touchy subject, I've had some personal experience (search Leo Stoller on Google). I'm not a legal expert, but I do not think you owe it to them. I would ask a lawyer to be sure.

sim · 06-08-2005, 04:46 PM

if worst comes to worst. make them take you to court if they wont pay you well. dont even get a lawyer. they will be spending thousands on a lawyer, then when you get there. be like oh, you can have it.

imaginemn · 06-08-2005, 09:03 PM

Quote:

Originally Posted by sim

if worst comes to worst. make them take you to court if they wont pay you well. dont even get a lawyer. they will be spending thousands on a lawyer, then when you get there. be like oh, you can have it.

Sim, this is really bad advice because not only would they persue the domain name they could also ask for legal fees as well and without an attorney on your side you are almost guaranteed to lose. I took a few years of business law in college and there is no way I would even attempt to represent myself.

The best thing to do is try to negotiate a fair offer. It would be stupid of them to offer you top dollar right away. What they are hoping for is that some kid owns the domain name and get scared and sell it right away. If you are making a steady income I would ask for something reasonable and hope they are willing to work with you. The worst that can happen is they say no and force you to stop using the domain name legally.

imaginemn