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My question is regarding the legal "right" to a domain name and/or TLD given certain circumstances.

For example, I have a company called Example Limited which registered in the United Kingdom. I own the domain name example.co.uk but not example.com. I'd like to have the domain name example.com for brand consistency and ease of use but it seems I was too late and someone already purchased the domain name. On their site is the standard ad links with a "This site is for sale for $40,000!" banner.

Of course, I don't particularly wish to part with $40,000 for a domain name. So my question is how little (or indeed much) must be done in order to be able to claim a .com if I own the .co.uk? Does any of the below change the "rights" I have to a domain name?

  1. Being a legally registered company in the United Kingdom.
  2. Owning the other domain names (.co.uk but not .com for example).
  3. Having the name trademarked (UK).
  4. Having the name trademarked (EU).
  5. Having the name trademarked (US).
  6. Being a legally registered company in the US.
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Unless you registered a trademark used in that domain before they registered it you're pretty much out of luck. –  John Conde Feb 14 at 21:01
    
Yeah that was my problem. Say I register a trademark today, that doesn't help when dealing with a domain squatter who bought the domain a year ago, threw some ads up and left it to rot. It would only help moving forward. Is there any way to recover it without spending ridiculous money? –  ScottMcGready Feb 14 at 21:02
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Since hiring a hitman is expensive we can rule that out. A lot of times domain squatters will accept a much lower offer just to get rid of the domain due to lack of interest. It wouldn't hurt to make them an offer. If their final price is still absurd say no thank you and walk away. I've heard more than once that the sellers often comes back later on to offer the domain cheap anyway. The key is not to look desperate otherwise they will think you'll pay a lot more for it and never let it go cheap. –  John Conde Feb 14 at 21:21
    
The problem you have is even if Example is a registered trademark, it is too common a word to make any claim. If it were not a common word, the jurisdiction you would have to file any taken into account. –  closetnoc Feb 15 at 1:58
    
@JohnConde I've been hit with this time and time again and every time I've just refused to snap the .com. With this particular domain, they offered it $100 cheaper. Erm, thanks but no thanks! –  ScottMcGready Feb 15 at 3:37

1 Answer 1

up vote 1 down vote accepted

Essentially this reduces down to if your situation merits filing a UDRP, which is the resolution process adopted by ICANN (the governing agency of TLDs like .com) for disputes over domain names.

In order to be successful in a UDRP, you need to establish three elements:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

  • The registrant does not have any rights or legitimate interests in the domain name; and

  • The registrant registered the domain name and is using it in "bad faith".

For the first element, if the registrant began using the domain as a mark in their respective country prior to your trademark registration, they could seek to block your trademark application there based on their earlier usage. If your trademark was approved however, the panel would have to weigh whether you had rights to the mark based on your own prior usage, which is not always so cut-and-dry (i.e., you'd need to supply evidence to support these claims).

For the second element, you would need to demonstrate that the registrant didn't have a legitimate interest in the domain, which unfortunately, serving ads would likely qualify for as even Registrars do this.

For the third element, you'd have to demonstrate they registered the domain in attempt to interfere with your business, redirect traffic, or bought it only the purpose of selling it back to you, etc... This can be difficult to prove, especially if they're using it to serve content with (even ads).

So based on the above, it seems unlikely that you'd prevail in a UDRP case, which can be an expensive and laborious process to go through.

Note that being unsuccessful in a UDRP does not preclude you from filing legal suit in your local jurisdiction however, if you feel your rights and business has been impacted by the other party. That too however is a costly avenue to go down, which is why many domain squatters will price their registered domains at or below the legal expense for pursing that route.

Negotiations, or simply registering another domain, such as one of the new gTLDs coming available would be your best options.

Tip: If you're negotiating for a domain, do so anonymously.

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