Domain Trademark Squatting

[thebloodyirishboys]

Hello,

I started a band called The Bloody Irish Boys in 2003.
On 04/11/2005 I received my Certificate of Registration (SRu582-574) from the Library of Congress showing the use of this name in a sound recording.
On 05/17/2005 I registered the domain http://thebloodyirishboys.com
Shortly after another company registered the domain http://bloodyirishboys.com removing the on 11/23/2005.
This company has intentionally in bad faith used our name as a hit farm to generate money for themselves through advertising and are currently cyber-squatting the domain.
We have had several fans think that we no longer exist by going to the wrong address.
On 10/20/2009 we received our certificate of registration from the United States Patent and Trademark Office (Reg. No. 3,697,571) stating that The Bloody Irish Boys is in fact trademarked.
I would like to claim this domain registration but I'm not sure what is absolutely necessary. Do I have to follow a UDRP Proceeding and what if I don't have the money for a proceeding through WIPO for example? Could it be as simple as writing a cease and de-sist letter to take ownership? Are there any attorneys that work pro-bono on a domain copyright case causing the defendant to pay for all costs incurred? Any advice on this matter will be much appreciated.
Thank you for your time!

Shayne

[LawResearcherMissy]

Do I have to follow a UDRP Proceeding and what if I don't have the money for a proceeding through WIPO for example?

To legally take ownership of the domain, yes, you need to follow the UDRP procedures.

Could it be as simple as writing a cease and de-sist letter to take ownership?

No. A C&D might be enough to get the person to stop using the domain, but it isn't enough to take ownership.

Are there any attorneys that work pro-bono on a domain copyright case causing the defendant to pay for all costs incurred?

Trademark, not copyright. And no, you're unlikely to find a trademark attorney willing to work for free.

[KeyWestDan]

You have a problem you don't even know about.

Trademarks are registered in particular classes of goods and services.

Although I do not know the specifics of your registration, it is entirely possible you only registered for audio recordings and not for internet use.

You also likely did not register your name in the class of goods that incudes clothing, so anyone could in theory market t-shirts with your name. Someone could make mirrors or glassware with your band name if you were big enough and you'd be out of luck there too unless you registered in the glassware class.

Trying to enforce in classes of goods and services you don't have a trademark in involves other torts than trademark infringement and complicates a legal case considerably. Such a case is VERY iffy and you will never find an IP attorney on a contingency basis.

Trademarks are enforced in US District Court and NO ATTORNEY will appear pro bono for you in federal court.

Also, keep in mind that trademarks can be registered at the state level with the Secretary of State. Having a federal trademark will speed the process. You can register in a state where the site owner lives, etc and then sue in state court for damages that arise after the registration. These registrations are typically much less than a federal registration. I assume the owners of the other site are not bright enough to register on the state level. If they did though, you'd really be out of luck.

Any business with important trademarks should have an IP attorney and should register on the state AND federal level. There are advantages to both.

P.S.

You should have been smart enough to register the domain without the unnecessary "the". You should have also registered other variations of the name and perhaps in .net domains too.

Being cheap or poor will always come back to bite you.

Double PS: You are really close to or maybe past the statute of limitations, especially if you have to rely upon torts other than direct trademark infringement.

[thebloodyirishboys]

Hey LawResearcherMissy,

Thanks for your advice on the matter and sorry about the copyright / trademark typo, I was really tired. Anyway just writing to say thanks and thought I would inform you of a company if you haven't already heard of them. The company is called Texas International Property Associates and that is who registered the domain name. I know this because I did a whois search years ago before they paid the extra money to show as private with the domain registrar as they do currently. Anyway they are a huge cyber-squatter with over 500,000 domains and searching them on google shows where they have been sued by all kinds of companies from Exxon to American Airlines etc..
I also thought you might get a kick out of this website below regarding such cases. Thanks again!

Shayne
The Bloody Irish Boys

http://domainfight.net/get_search.ph...nal%20Property

[KeyWestDan]

In that case, you can show bad faith on their part and that might make a stronger case, but you'd still have to go to federal court and that wouldn't be cheap.

Good luck.