Someone is Squatting on my Product's .com Domain

[MoreVolume]

- Brought a product to the market in 2017
- The product has a unique name and it's trademarked.
- I have to sell the product through the .NET (productname.net) because the .COM was being used by a South American construction company
- One day a few months ago I received an email from someone trying to sell me the .COM domain name. Apparently the South American company's website shut down and this guy purchased the domain.

Now the domain is on sale for $10,000.

Do I have any type of legal claim to this domain?
I definitely would love to use the .COM domain, but I don't NEED it and I am definitely not going to pay this guy $10K

 

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[Bounce Back]

Good luck - a tale as old as the internet. Giant companies haven't been too successful on this front unless the person owning it is scared of litigation from what I've seen.

 

[c4n]

Actually, you might have a claim under the UDRP (Uniform Domain Name Dispute Resolution Policy).

I know because I was on the receiving end of one many years ago (I won the dispute so I kept my domain).

UDRP is an ICANN procedure that allows a domain name to be transferred to someone else if he/she/they can prove that:

#1 the disputed domain is identical or confusingly similar to their trademark and
#2 the current registrant has no rights or legitimate interests in the domain and
#3 the domain has been registered and is being used in bad faith

WIPO is the one that handles the complaints (might be others):
Domain Name Disputes

The fee is $1500, but it does not guarantee that you will get the domain. Only if you are successful in proving the above.

If you own a registered trademark, then #1 above is easy to prove. For #2 and #3 you can read through the various past decisions (2023 and prior are mostly public) to see what qualifies and what not:
WIPO Domain Name Decisions (gTLD)

A lot of questions are answered also here:
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Jurisprudential Overview 3.0”)

You can draft and submit the complaint yourself. WIPO even provides a sample complaint document:

UDRP Model Complaint and Filing Guidelines

WIPO Arbitration and Mediation Center, El Centro de Arbitraje y de Mediación de la OMPI, Le Centre d'arbitrage et de médiation de l'OMPI

www.wipo.int

However, hiring a lawyer to do it is the recommended way.

Good luck!

 

[Dark Water]

- $10k is not a lot in the grand scheme of things here, but you are also free to bid lower
- You will lose SEO value / customers migrating even from .net to the .com version
- Consider "getxyz.com" or "joinxyz.com" if you want to migrate to .com regardless

 

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[theag]

$10k for the exact match .com of a product with traction is a no-brainer. Be happy that its even for sale and get it.

 

[inputchip]

As @c4n mentioned, you might have grounds for a successful UDRP case, although if you are hiring a lawyer you will likely end up being over $5k anyway with no guarantees. Or you can purchase it outright for $10k with a guarantee that you own it.

It's not illegal for someone to own a domain name of a registered trademark. Simply owning a domain name is not considered trademark infringement unless you can show that it as done in bad faith. It all depends on how they are using the domain.

At the very least, move away from the .net and use a prefix like get, shop, etc., or register the .co.

 

[amp0193]

$10k for the exact match .com of a product with traction is a no-brainer. Be happy that its even for sale and get it.

I think 10k is what I paid for brandnamedotccom domain.

Took me 4 years to convince the owner to even offer it for sale.

 

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