Advice needed: Does domain age matter for TM infringement?

[amoeba]

My basic question is: can you get in trouble for TM infringement if the domain was created way before the company created the domain name they're currently using, and has stood unchallenged for a very long time (~10 years)?

Here's the situation. I just won a domain name at snapnames, let's say Acme.com (not the real name obviously). It's also the name of a large furniture maker. Their website is AcmeFurniture.com. Acme.com has been owned since 1996 by Acme Associates, a legal consulting firm, who recently let it expire. AcmeFurniture.com was registered in 1999 (3 years later), and the furniture company has been using it ever since.

Acme.com was transferred to SnapNames by a priority partner, so it still has the original (1996) registration date, if that makes a difference.

The "Acme" name has been used by the furniture company since the 60s, and I'd assume it's been trademarked since way before 1996.

However, given the fact that the Acme.com domain was created before their current name, and has stood unchallenged for more than 10 years, will this be a trademark issue? I think I remember a case where the plaintiff didn't challenge it for a few years and they lost their rights to challenge the name.

Second question, does how I use it influence it? Will I not be allowed to do anything relating to furniture? Will it be a problem if I park it?

Note: the company is big. they have deep pockets to pursue it if they have a case.

Sorry for the long post. I don't know much about this type of trademark law. Any help is greatly appreciated.

 

[snoop]

"However, given the fact that the Acme.com domain was created before their current name, and has stood unchallenged for more than 10 years, will this be a trademark issue?"

I don't think this would carry any real weight. The date they created a domain is of no significance, the date they first started using the trademark is what is relevant. The unchalleged for 10 years doesn't mean much either, quite a few disputed domains would fall into that category. I gather you are thinking about the wwf.com case.

 

[amoeba]

I wasn't aware of the wwf.com case. I was thinking of the theos.com case (see http://www.theos.com/dispute.html ).

My point is that rather than contesting the Acme.com registration in 1999, they chose instead to allocate AcmePianos.com. Doesn't that qualify as implied abandonment? Especially after 8 years. The theos.com case was ruled in favor of the registrant, and that was after only 3 years.

[edit: it's been 8 years since the newer name was registered. my bad.]

 

[Dave_Z]

Why they dropped the domain name in question is something only the party in
question can answer. Rebranding, somebody forgot to renew, who knows?

If the domain name shows any hint of commercial use that can be associated
with the party's trademark in question, then expect heaps of trouble. If you're
intending to use it that's completely unrelated to the other party and ready to
show a legitimate use for it, you might...might...have a chance.

That's what trademark laws are for.

 

[amoeba]

From what I've been able to dig up, it seems that the legal firm underwent a merger and started using a different name, and they let the old name expire. Seeing as how the furniture co. didn't challenge the legal co. all these years, as long as I stick to something outside of the furniture biz I think I should be ok.

However, is there anything against putting up a simple for sale page?

 

[labrocca]

USE is going to be the deciding factor here since as you say..the time frame can be viewed in various ways by a panel. Your best argument is to steer your site away from the furniture industry and place a site totally unrelated there for now. DO NOT PARK. WIPO has very slanted opinions of parked domains. You will give them a preconcieved notion that you are a squatter. Develop the name if possible asap.

Now you don't say they have contacted you yet. This is GOOD. They may not be aware of the domain change or possibly they simply do not care about it. If possible can you PM me the name. I promise confidentiality not to disclose to anyone else. Insight to the actual name might be helpful.

 

[Ronald Regging]

I think the date the domain was registered is irrelevant. Even if the previous owners had a TM in a different category, and therefore a legitimate right to the domain, you do not, therefore you have no rights to it. I think the same thing happened to Adsense.com, because they previous owner had a TM that predated Google's. Then they sold the domain to a third party, but did not include the TM in the sale. Less than a month later, Google owns the domain Who knows how they got it, but the point is the previous company may have had a legitimate right to the domain, just because you now own it does not automatically transfer that right to you.

It will definitely come down to usage. I suggest putting up a site completely unrelated to the other company and doing it fast. Don't park it, dont put For Sale on the site and don't list it for sale on Sedo and the like... Then hope for the best.