Advice re TM highly appreciated

[Jawed]

Some advice is urgently needed from experienced people. I acquired a two word domain name (dictionary 2 words' phrase) with .com extension a year ago. The name was originally registered in 2000. I have recently discovered that someone applied for trademark in the USA for the same phrase in 2006 and was granted.

My question is: what is the legal position of my .com domain name. Am I not allowed to do business under this name? The irony is that TM holder has been granted TM for the same category I plan to do online business. I live in the UK and I can apply for TM here and hopefully my application would be successful. Again, will I be breaching any piece of law if some users in the USA do transactions using my site?

Is there any possibility that I apply for TM in US for the full phrase.com? Will adding .com change its substance? I would be really grateful if some knowledgeable people shed some light on it.

Thanks in advance and kind regards

 

[reprint1]

You need a domain lawyer to give you proper advice.
Because the domain was registered prior to the TM being applied for, you are probably fine with the domain itself.
"The irony is that TM holder has been granted TM for the same category I plan to do online business"
So you have held the domain since 2000 and have done nothing with it? I would not enter the same business as the TM holder now without legal advice. While your domain may be fine, the business that you create may not be depending on how you set it up and promote it since the business would be created after the TM was established.
adding . com will usually not change its substance. Make sure the TM they got is for the two words and not for some rendition of the two words such as font, color etc.

 

[Jawed]

Thanks a lot reprint1 for your valuable advice. Rep+ on its way.

(PS. The domain was registered by someone else in 2000; I acquired it from him a year ago.)

 

[ZandyMan]

One of the main reasons intellectually property licenses (trademarks, patents, copyrights) are granted is to encourage people to make timely use of their properties. The fact that you have not done anything with your domain name in 9 years will definitely work against you.

With trademarks in particular...the main element a court or judge looks at is whether your mark (domain name in this case) causes "confusion" in the marketplace. For this reason you see several companies holding trademark rights to the same slogan or name because they operate in completely different business arenas...hence no confusion. In your case you say the TM holder is in the same business as you...this means the likely hood of confusion will be much greater should you setup your business. With that in mind, I would say definitely consult a lawyer if this will be a major investment for you. I myself will be graduating law school in May :tu: Good luck!

- Zander

 

[tricolorro]

(PS. The domain was registered by someone else in 2000; I acquired it from him a year ago.)

Then you will not have any benefit from the earlier registration
according to many UDRP decisions I've read.

But that's just :imho:

 

[Name Trader]

If you bought it after the trademark was issued, you are probably sunk. But you best seek the advice of a domain lawyer. Or simply find another domain name to do business under.

 

[Corey]

what is the extension of the domain name?

Cheers
Corey

 

[copper]

Then you will not have any benefit from the earlier registration
according to many UDRP decisions I've read.

But that's just :imho:

I read that few times as well.

 

[Jawed]

Thanks a lot every buddy. I really appreciate everyone’s advice and suggestions. I can see a consensus that this domain name is of no use for me in the present circumstances. In that case, I need to find another domain name for my proposed website and must not take any further risk.

Corey
It is a .com domain. Thanks.