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1997 Domain & 2006 Trademark

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RyanS

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If I own .com and someone else owns the trademark, who has the legal right to the domain?

The short story is: Today I purchased xyz.com which was originally registered in 1997. A someone registered the trademark "xyz" in 2006. Can use the domain as I please?

Please advise..
 
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If I own .com and someone else owns the trademark, who has the legal right to the domain?
You until someone, if ever, disputes your legal right successfully.

The short story is: Today I purchased xyz.com which was originally registered in 1997. A someone registered the trademark "xyz" in 2006. Can use the domain as I please?
Except for doing whatever that essentially recognizes the trademark or tries to exploit it, pretty much.

Just try to avoid giving any impression of "confusing" the domain name with its trademark namesake.
 
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Dont park the domain, dont earn money in same business with trademark owner, dont say bad things about trademark owner :D Thats it. Good luck.
 
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This is very much a grey area in my opinion. I don't think it's outside the realm of possibility that someone could successfully prove that your acquisition of this domain after the trademark was registered represents an intention to capitalise on the brand. It doesn't matter if the domain was registered beforehand.

If it's a very generic term it's obviously possible to argue against that.
 
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This is very much a grey area in my opinion. I don't think it's outside the realm of possibility that someone could successfully prove that your acquisition of this domain after the trademark was registered represents an intention to capitalise on the brand. It doesn't matter if the domain was registered beforehand.

If it's a very generic term it's obviously possible to argue against that.
If the renewal date is before the trademark application. Then they cant accuse. In other cases they can try and they can win it.
 
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A developer owns the TM who is in the process of starting/building a new city. It is a 30 year project. I own the exact match domain.

1. Can they fight me for the domain?
2. Can I use it for anything related to the city?
 
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A developer owns the TM who is in the process of starting/building a new city. It is a 30 year project. I own the exact match domain.

1. Can they fight me for the domain?
2. Can I use it for anything related to the city?
1. Yes. Whether that developer will or not is up to that person.
2. Yes, but...no hints whatsoever of commercial use. Not even ads.
 
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As per the UDRP precedents. the change in ownership is considered as Fresh Registration and it doesn't matter when it was first registered or renewed last. Relevant text of few decisions is as follows:

"WIPO UDRP panelists as a consensus view have treated transfer of a domain name to a third-party as a new registration." - 4chan, LLC v. Oversee Domain Management, LLC [WIPO Case No. D2014-0484]

"In any event for this Panel, the relevant date for consideration is not the date of first registration of the Domain Name but the date of acquisition of the Domain Name by the Respondent which it states in its Response is 2010. Generally, a transfer of ownership of a domain name constitutes a new registration, and UDRP panels typically look only at the claimed rights and interests of the current registrant in determining whether that registrant has rights or legitimate interests. The defence of laches does not apply in this case." - Miranda Kerr v. orangesarecool.com [WIPO Case No. D2013-0553]
 
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Of course you own the domain and you can use it.

If the company can get the domain as the reason of trademark , I will establish many new companies called " Toys Ltd. " " Car Ltd." to get the toys.com , car.com for free :P
 
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Of course you own the domain and you can use it.

If the company can get the domain as the reason of trademark , I will establish many new companies called " Toys Ltd. " " Car Ltd." to get the toys.com , car.com for free :P
You misunderstand (though pretty much all of us do once in a while).

Having a trademark doesn't mean its owner can get the domain namesake just like that. Search for Leo Stoller, who tried and failed miserably.

A concern here is the scenario wherein one gets a domain name that was registered before its trademark namesake existed. As some administrative cases (e.g. UDRP) have shown, you still can't use that domain name to take advantage of that trademark especially if you just became aware of it.

Let's say you registered abcxyzDOTcom in 1997 and then someone used abcxyz as a trademark for something in 2006. If you parked the domain name since 1997 or so, then you can't change its ads to show competing products/services of the mark because that (at least) gives the impression of trying to exploit the latter.

Where things (tend to) get confusing or complicated is trying to sell that domain name to a trademark holder. Ideally, you "should" be safe if you do it. As some cases indicated, however, that situation isn't necessarily clear.

Is this sucky or worrisome? Maybe.

Is this avoidable? Yes, for the most part.
 
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So I got an expected call from the owners of the TM. They want to buy the domain from me. I am speaking with an attorney tomorrow and hoping I have a case to keep this domain.
 
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The tm owners just call you out of the blue five days after you bought the domain? This means they are monitoring the domain. They know it changed hands. Your 1997 date not so strong anymore. Is it a LLL.com? If it is its totally worth their while to try a UDRP. Make sure you have a lawyer that knows domains. Good Luck
 
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It is not a LLL.com. Does anyone have recommendations for a great domain attorney?
 
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Why not just sell it to them ?
 
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FYI, they called you because they didn't want a detailed paper trail of the conversation.

Just "not for sale" them until they make an offer you will accept, and don't use it for anything similar to what they are doing.

Most importantly, develop it into something. That's all you need to do.
 
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It is not a LLL.com. Does anyone have recommendations for a great domain attorney?

Any lawyer that has the word "Trademark" and "Domain Name" in their description (and evidence to boot). They're not going to be free though. You can find names by looking at winning UDRP (Berryhill, Neu are the two notables).

Might also want to review your purchase contract and see if it had anything in it relating to known third party claims.
 
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do you intend selling d domain? Or u want to build a business on it?
 
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Looks like bc they have the TM they can take the domain...
 
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They'll try to scare you to hand over the domain. You can hire a lawyer to respond to their threats if the domain is worth a lot.
 
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