Trademark domains (1.Viewing)

I remember reading about a domain lawyer that was recommended around the forums, but my search efforts failed me. If someone knows who I am talking about, I'd appreciate a note.

Here is the situation. I am helping a family member with digital marketing. Her distribution business name (it is a made-up name, not a dictionary word) is trademarked in both US and Canada. The business name is not imperative (her primary focus are the products that the business distributes), but now that she wants to build a corporate site, she noticed that her name is taken in .COM zone (she owns .CA) and someone is trying to sell it.

The usage of that domain is directly blocking her from maintaining business operation.

In your experience, what are the chances to take that name away based on registered trademarks? Or at minimum, pressure the seller into a reasonable settlement?

Ah! I found one. Is Zak Muscovitch from https://dnattorney.com/ still the go-to guy?

Artashes said:

Ah! I found one. Is Zak Muscovitch from https://dnattorney.com/ still the go-to guy?

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You can't get much better than @Zak

Artashes said:

In your experience, what are the chances to take that name away based on registered trademarks? Or at minimum, pressure the seller into a reasonable settlement?

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Unless he or she is an idiot you have a 0% chance of winning a UDRP, as the date of your TM needs to backdate that of the original domain registration date to even have a shot of winning.

Your "usage of that domain is directly blocking her from maintaining business operation' refrain is a common excuse in slam-dunk RDNH cases.

Artashes said:

Ah! I found one. Is Zak Muscovitch from https://dnattorney.com/ still the go-to guy?

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He is THE Man!!!

Eby said:

He is THE Man!!!

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You speak the truth, but in this particular case, I would definitely save your money.

DomainRecap said:

You speak the truth, but in this particular case, I would definitely save your money.

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I checked the dates, the domain edged the trademark by a few months unfortunately.

I'll wait to hear from Zak, and based on what he says, either will let the owner fight or help negotiate a deal.

Thanks for your input guys.

Without details it is hard to give advice here. But some questions would be, is it reasonable to think that the .com domain owner bought the domain specifically to hold and sell to your family member? Is it reasonable to think they would know your family member's business exists? Is it a popular term taken in many extensions? Zak is a great domain lawyer.