Bad faith?

[Jackie]

I read this post in Domain Name Discussion and it spurred my curiosity about a situation like this.

you will probably drop them next year around ... and even if someone regs them and develops them , they will just come to you later to buy the .com ... even if they trademark the name (after you bought the .com) they still cannot take it away from you (and they could be liable to domain hijacking since they should have done their due diligence and check for the .com version before registering a mark) ... but , as I said , it is up to you ...

http://www.namepros.com/domain-name-discussion/349787-i-have-great-name-do-any.html

So suppose if I registered a name in .com. Let's call it example.com. If during the course of the time my .com is regged, somebody registers example.net, develops it, and maybe trademarks it.

Now, let's look at it the other way around. Would it be considered bad faith to promote the name to the .net owner?

Thanks,
Jackie Liu.

 

[shanee86]

I would say it wouldn't be bad faith if you owned the .com first. Because .com is like master ext and I have alot of people register .net of mine and makes me mad.

 

[DNQuest.com]

Now, would the TM be with or without the .net extension? If it is, then they can only enforce the with extension. Now if the TM is just on the word, then that will broader thier TM, but you could be protected as long as you do not start using the TM in bad faith. It is harder for them to come after you, but they can still try.

 

[IAmAllanShore]

<broken record>

1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 , Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527 , Transfer
Iogen Corporation v. Iogen D2003-0544 , Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

Relevant decisions:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074 , Denied
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 , Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182 , Denied

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

Relevant decisions:
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669 , Denied
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320 , Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845 , Transfer

From WIPO.int

</broken record>



-Allan :gl: