I trademarked the name of my personal service business in 1994.
Untill now I had no need of a domain in that name,but I am now in the
process of selling a book which directly relates to my business, and I
will soon  need to have it.
When i attempted to get the domain, I found it for sale for 10,000.
When I inquired to it's owner, telling him that what he was attempting
to sell was my exact trademarked business name, he said that I did not
'deserve' it as it was a 'commonly used phrase'. ('get your act
together' is  the name)
My question is this...Is arbitration(and 1500) my only recourse? and
if so, as I am such a small business, would I have any chance of
winning?
Wading through the ocean of information out there did not give me a
simple answer.
Although there may not be one.
Thank you for your time.

---

Clarification of Question by lucylucylucy-ga on 22 Oct 2003 06:26 PDT

Thank you all so much  for taking the time to answer this.
Yes I could get a .biz ect, but I find the thing philosophically
perplexing.
It seems a kind of Klondike mentality..."I do, because I can"...with
no thought of the  morality, or even the consequences.
Of course I am older, and a bit of a Luddite.
And business is business, so they say.
Common sense tells us  not to take these things personally, and
undoubtably it is all very complicated, but still, it seems like a
kind of quasi-legal  identity theft.
This is not the end of the world, but all these small incursions add
up.
The result can only be a continuing  and insidious sense of
unease...especially for those folks who cannot see these things
objectively.
But it is a new world.
Thanks again for all the free advice.

Lucylucylucy,

Where's Ricky when you need him?

Just a few thoughts, if I may:

--have you considered other domain names, such as
getyouracttogether.biz or get-your-act-together.net, both of which are
currently available (as are other variations)?

--if you really want the domain name that's up for sale for $10 thou,
keep in mind that's just the asking price (five years ago, they might
have gotten that kind of money...these days, it's much less likely). 
Offer them $500 and see if they take it.

--If you really want to challenge the name based on the trademark,
your options are arbitration or court and yes, it's not simple.

Best of luck to you.

pafalafa-ga

I don't think you have much legal chance -- did you read the case
about barcelona.com?  The owner of the domain had turn it over to the
city of Barcelona.  One of the deciding factors in the court case was
that the registrants themselves contacted the city offering to sell
them the name.  That small action put them into trademark infringement
territory.  If they hadn't solicited the city, they probably could
have kept the name privately just like boston.com and madrid.com.

It's kind of a long domain anyway.  How about gyat-something, like
gyat.net?

"Get your act together" is indeeed a common phrase, so I don't think
you'd have a chance of being declared entitled to it. If your business
were "Get Your Act Together Shoes" and you wanted
getyouracttogethershoes.com, that would be another story.

Hi lucylucylucy

This is really interesting because I have been receiving invoices from
a company advising me that payment for www.[myname].com is due, and
I'm really annoyed about it! I never asked for this and can't imagine
that there'd be too many takers for a domain name featuring with my
own name -- I mean, it's not a well known name or anything! I think
you hit the nail on the head when you say it's identity theft. This
particular crowd have designed their invoices to look a lot like a
utilities bill and just this week, they've sent me a 'red' reminder
notice for AUD$237, advising me that my domain name is currently
unregistered! I just wonder how many people have paid this company
without realising that they're not legitimate.I tried phoning them
several times but they only have an answering service and needless to
say, I haven't heard back from them. I've also contacted our local
Office of Fair Trading because I think that it's sharp business
practice. We Luddites have the right idea about what's right and wrong
I reckon. Good luck to both of us!

Dear lucylucylucy,

When you say you trademarked the name in 1994, does that mean you
obtained a federal registration?  There is a federally registered
trademark for "Get Your Act Together" (Registration Number 2114055)
for personal business services, but that shows a first use date of
1991 and a registration date of 1997.  Is that yours?  Assuming it is,
then you have pretty good rights to obtain the domain name from the
domain registrant under one or more of the theories presented by
missy-ga in her answer to Google Question ID No. 268274 (missy's
answer was directed to the domain name owner, so you just have to
"switch hats" as you read the answer since you are the trademark owner
here).

The domain registrant's argument that you have no rights since this is
a common phrase is a lot of hogwash, especially if you indeed are the
owner of that federal trademark registration. I encourage you to
review missy-ga's answer and select a course of action that works for
you.  At a minimum, I would strongly demand that the domain registrant
surrender the rights to you peaceably (perhaps you could offer to
reimburse him for the registration costs) since you have superior
rights to the domain under several theories.  You may want to spend a
few hundred bucks to get a good law firm to write to the domain
registrant on their letterhead and threaten him (missy-ga has already
done the research for them), but that's cheaper than either UDRP
arbitration or full-blown litigation.

Another tactic is to write to the registrar itself (the entity from
whom the other guy obtained the domain registration, e.g.,
register.com--there are hundreds) and complain under their terms of
use (all registrars have terms of use that govern their services, see,
e.g., http://www.register.com/service-agreement.cgi?cmp=IL10682) and
advise them that one of their customers is in breach of their terms of
service by using a domain name that infringes on your trademark
rights.  Look at section 1(d) of the register.com terms of service and
you'll see what I mean. I did not check to see if register.com is the
registrar here--I just gave that as an example.

At the end of the day, the domain registrant is a cybersquatter, pure
and simple, especially if indeed you have been using the mark since
1991!

Good luck and go get 'em!