10 ms·

I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before t

I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before they registered the trademark. I looked up the ICANN rules and saw I had priority. Pointed out the ICANN rule and told to go away. They did. IANAL; this is not legal advice.

masklinn 5y ago
Also IANAL but these demands make even less sense due to trademarks being categorised in classes, that you own Douche® registered in rubber products doesn't mean someone else can't have Douche® furnitures, and both have a reasonable and compatible claim to the name (for instance there are at least 5 different companies or organisations called "Apple" with presence in the US). Furthermore, the USPTO allows multiple trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive).
- kingcharles 5y ago
  Right. OP could register the trademark for his domain in another class right now and then see what happens...
- rbanffy 5y ago
  > for instance there are at least 5 different companies or organisations called "Apple" with presence in the US An interesting trivia is that Apple Computer got in trouble with Apple, the record label, when they introduced the Apple IIgs, because it had a musical instrument synthesiser chip built in.
  - organsnyder 5y ago
    I thought the issue happened when they launched iTunes. Perhaps it happened both times.
    - rbanffy 5y ago
      It happened a couple times. https://news.ycombinator.com/item?id=29523431 https://news.ycombinator.com/item?id=29523431
  - deleted 5y ago
    [deleted]
  - hn_throwaway_99 5y ago
    But the further detail on that is the reason for this is that Apple Records and Apple Computer had previously signed a settlement agreement where Apple Records promised not to get into the computer business and Apple Computer promised not to get into the music business. Obviously, subsequent court cases and agreements allowed Apple Computer to get into music. Lots of details on Wikipedia: https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
- aasasd 5y ago
  > Douche® furnitures Somehow that does have the cadence and sound of a ‘premium’ brand, or at least faux-premium. The ‘registered’ symbol really sells it, though. In these post-ironic times, I can easily see this name being used.
  - DonHopkins 5y ago
    Rhymes with Touché.
PinguTS 5y ago
Right. Had the same issue years ago. Did the same and worked the same. Just point them to https://www.icann.org/resources/pages/help/dndr/udrp-en https://www.icann.org/resources/pages/help/dndr/udrp-en
DonHopkins 5y ago
Milk.com FAQ: Occasionally, our adoring public has a salient question. Here are the most frequently asked, along with clear, concise answers. Please only send mail if your question has not already been answered on this page. http://milk.com/faq/ http://milk.com/faq/ http://milk.com/value/ http://milk.com/value/ History of bud.com: https://bud.com/history-of-bud-com/ https://bud.com/history-of-bud-com/

masklinn 5y ago

Also IANAL but these demands make even less sense due to trademarks being categorised in classes, that you own Douche® registered in rubber products doesn't mean someone else can't have Douche® furnitures, and both have a reasonable and compatible claim to the name (for instance there are at least 5 different companies or organisations called "Apple" with presence in the US). Furthermore, the USPTO allows multiple trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive).

kingcharles 5y ago
Right. OP could register the trademark for his domain in another class right now and then see what happens...
rbanffy 5y ago
> for instance there are at least 5 different companies or organisations called "Apple" with presence in the US An interesting trivia is that Apple Computer got in trouble with Apple, the record label, when they introduced the Apple IIgs, because it had a musical instrument synthesiser chip built in.
- organsnyder 5y ago
  I thought the issue happened when they launched iTunes. Perhaps it happened both times.
  - rbanffy 5y ago
    It happened a couple times. https://news.ycombinator.com/item?id=29523431 https://news.ycombinator.com/item?id=29523431
- deleted 5y ago
  [deleted]
- hn_throwaway_99 5y ago
  But the further detail on that is the reason for this is that Apple Records and Apple Computer had previously signed a settlement agreement where Apple Records promised not to get into the computer business and Apple Computer promised not to get into the music business. Obviously, subsequent court cases and agreements allowed Apple Computer to get into music. Lots of details on Wikipedia: https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
aasasd 5y ago
> Douche® furnitures Somehow that does have the cadence and sound of a ‘premium’ brand, or at least faux-premium. The ‘registered’ symbol really sells it, though. In these post-ironic times, I can easily see this name being used.
- DonHopkins 5y ago
  Rhymes with Touché.

PinguTS 5y ago

Right. Had the same issue years ago. Did the same and worked the same. Just point them to https://www.icann.org/resources/pages/help/dndr/udrp-en https://www.icann.org/resources/pages/help/dndr/udrp-en

DonHopkins 5y ago

Milk.com FAQ: Occasionally, our adoring public has a salient question. Here are the most frequently asked, along with clear, concise answers. Please only send mail if your question has not already been answered on this page. http://milk.com/faq/ http://milk.com/faq/ http://milk.com/value/ http://milk.com/value/ History of bud.com: https://bud.com/history-of-bud-com/ https://bud.com/history-of-bud-com/