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I don't know if I should put the actual names in this post so I'll use something very similar. The names below are made up but will explain the situation.

I have a legit corporation: Building Management Software (in business since 1988).

I have a legit domain:

(It is software for Building Managers or Office Park Managers).

Keywords are: building management software, building manager software, office park management software, office manager software, strip mall software, office park manager software, etc.

There is another corporation: Office Park Manager (in business since 1988).

Their website is:

They have a PRINCIPAL-2(F) trademark obtained in 2008. (I don't know how they got through such a generic trademark, but it was probably because of long public use.

Both products are in the same exact business: Software for Office/Building Managers.

I have a domain and website owned since 2006:

On that website the title is: Software for Office Park Managers.

(On the website I advertise my own company services).

They are threating to sue and demand I fork over the domain. Should I fight this? They claim I am cybersquatting to take their customers.

What can I do? I would appreciate any help on this!..

Comments (17)

If you have been in business since 1988, then I would fight!..

Comment #1

They have a PRINCIPAL-2(F) trademark obtained in 2008.

I have a domain and website owned since 2006.

You win...let them sue..

Comment #2

They GOT the tm in 2008. When did they file for tm? When was their first use in commerce? What was the status of their application when you registered and started using the domain?.

Step #1) Get a good lawyer. Someone who knows what they're doing needs to look at the history of their tm application along with the specific details of the domain they are contesting to evaluate your chances of keeping the name.

As to how they got a tm on a descriptive/generic term - it can be done and they aren't the first to do it. Most domainers don't realize this - I didn't, until I saw a real-life example. In that case, the application was rejected by the USPTO several times on the grounds that it was generic. Finally, the company produced a deluge of documentation from a bunch of their peers in their industry (read: "friends"), and a formal survey (read: "paid someone to design this") stating that the phrase was associated with their brand. USPTO finally threw up their hands and let it go through. Took them a long time and probably cost a small fortune, but they got the tm.

Step #2) See step #1...

Comment #3

You'll win this, but it would probably cost you.

They can't 'sue' you for the domain name, the most they can do is file a UDRP and if they do that, you claim first use and win.

If it means a lot of business to you, get a lawyer and fight them, for sure...

Comment #4

You're not cybersquatting if the website is legitimate (e.g. not parked, and it seems so, since you had it selling your own services since 2006). BUT, the key question is whether "Office Park Manager" is really generic enough, or if it was a notable/unique company name. They don't necessarily have to file a trademark, as under certain jurisdictions, registering your company name offers some legal protection on it's own. Whether this carries over to domain names is questionable, depending on the name. It does appear that your claim is strong, but I wouldn't take risks in your shoes.

I would advise you to obtain legal advice and proceed cautiously. Don't email them back until you do so...

Comment #5

If you are selling your own products to this service surely in a sane world you would win? good lick..

Comment #6

You should seek professional advice as a priority. On the face of it, you seem to have the strongest claim to the name, but all the information which would clarify that would need to be looked at by a professional. It may turn out that you could take their name from them...

Comment #7

You should get a lawyer and sue them. Your lawyer should be able to their lawyer that you have first use rights and that you'll sue them for the EXACT same reason they are allegedly suing you.

A website does NOT give you first rights use. You been in business since 1988 and you have first right use even if you didn't register a name till yesterday.

Get a lawyer and school them. Idiots are probably trying to intimidate you. Don't let them and be strong.

I would call their lawyer directly and say this:.

"I have to let you know in case you were not aware that I have been conducting business since 1988. I have not yet hired a lawyer but I have been advised that I do have first use rights and it's come to my attention that your company is actually cybersquatting on my name. If you persist in suing me I'll be forced to counter sue and demand you hand over your domain to me. Now we can go that route and have a costly long drawn-out fight or we can come to terms about how we conduct business without stepping on each others toes. I am more than willing to go either way as I have no intention of just handing over my domain to you.".

Or something like that...

Comment #8

Thank you SO much for your input on this. I have contacted one of the attorneys listed here at NP. He feels I could win this and 'maybe' even force them to lose their own trademark because it is generic and should not have been allowed in the first place. The fact that they have been using the name for many years probably was a factor in that decision by the trademark office, since it is a well known software name.

However, I don't have the money to take this to court. They are threatening a 'trademark' lawsuit, not just an ICANN domain arbitration, so I will probably give up the domain. There are plenty of other relevant keywords. That is a shame because they will probably bully other businesses that have similar company names, domains, or keywords.

Happy Holidays and the best New Year ever!..

Comment #9

It's likely if you hire a laywer to explain your position they won't go to court. Intellectual property lawyers hate litigation. But you'll need a lawyer probably to show them you do mean business. If you show any weakness they'll see it as a sign to pressure you. Push back imho. You already have a lawyer telling you you could win.

I would guess that hiring a lawyer would allow you to keep your domain at the very least. Heck at the real very least it can help you keep the domain long enough to reestablish a new domain for your business if you decide to do that. Do you really want to just give it up without preparing a new site and informing your clients?.

It's a bad move to just roll over given the information you have provided...

Comment #10

Show them your evidence, and basically state that you are going to turnaround and countersue, and if you show any weakness they will pounce. Did they ever offer you $1000 for the domain or anything, is it that valuable to you?..

Comment #11

Yes agreed at least get a lawyer to counter and see where it goes from there , good luck with this , I hate to think it comes down to who has the bigger pockets ,,,, because that sucks..

Comment #12

Definitely worth hiring a lawyer - hopefully a little lawyer-to-lawyer conversation will convince them back down...

Best of luck to you!..

Comment #13

Thanks for the support. I did reply back and told them I am getting a domain/trademark attorney and won't back down. I'll post the results in this thread...

Comment #14

Pleased to hear that !!.

Maybe counter sue with a no win no fee lawyer ?

Comment #15

I think it is a mistake to reply back yourself. The next communication they receive should be from your lawyer basically saying that you will fight the case, and threatening to counter sue (if your lawyer advises you this is an option). They are not going to take a letter from you seriously, but they will take a letter from a lawyer seriously.

You will only be paying your lawyer for a letter at this point. Don't get him deeply involved in the case since you want it to rest at this point if the counter party gives up.In the UK you can get a fixed fee interview with a lawyer and pay for a letter. Hope you can do the same where you live...

Comment #16

The absense of a registered trademark does not give one a free pass to use a mark. If it was "a well known software name" at the time you registered the domain, then it's not the slam dunk case for you that this thread makes it out to be...

Comment #17

This question was taken from a support group/message board and re-posted here so others can learn from it.


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