Indian developer, Sundar Rajan, faced threats about his domain, WPDeveloper.com, by the registrant of the matching .net. The .com was registered in 2007, while the .net in 2009.
The .net registrant wanted to buy Rajan’s domain at a price that wasn’t accepted. Rajan’s rejection of the offer was met with a threat to acquire the domain via the registration of a trademark for WPDEVELOPER and WPDEVELOPER.COM.
The case did not go to UDRP arbitration, because quite smartly, Sundar Rajan hired IP attorney John Berryhill who filed an opposition to the applicant’s trademark.
The application was subsequently terminated, and the Sundar can carry on with his domain, WPDeveloper.com, confident that it’s not under attack from WPDeveloper, Inc. from Bangladesh.
IP attorney, Gerald M. Levine, said of the approach to go after the trademark application of the other party:
“Important and generally ignored area; yes, preemptive strike to avoid unnecessary and costly urdrp arbitration, but equally, and perhaps more important, protecting an unregistered, earlier commercial use of identical symbol.”
WPDeveloper.com
Hi,
Thanks for the detailed post on this matter & I would thank you ppl for it.
Yes without IP attorney John Berryhill , I would have been in deep trouble.
He was very approachable , polite but very prompt in following up with the case by providing best solution.
Also I had to fight with the same applicant here in India too , as they tried to register TM with Indian Trademarks registry too.
I had to hire a lawyer who were very good like John & they helped me file the opposition & terminate the registration.
Had to fight to protect our rights & our properties.
Thanks to John & my Indian lawyer Bikash
Sundar – thank you for sharing your experience with us!