Copyright and Trademark Question

[DomainAuction]

i am curious on what happens if i own a domain name (ex. google.com) and then 2 years later a person or business copyrights or trademarks the term/phrase "google".

I own a great domain name that is not copyrighten or trademarked and i want to know what happens if this situation occurs.

Thanks for your time NP'ers
- ak91342

 

[Fleege]

GREAT question. I have often wondered this same thing. I think the time stamping of a domain registration would trump over a later trademark - not to the point where you could get the trademark for your domain (possibly even that with the .com added) but to the point where you can continue to own your domain name.

 

[allboeing]

Well no WIPO action can be taken because it wasn't registered in bad faith so thats that one out.
But if you then changed your website to match their market then you would be vulnerable to a WIPO action.

 

[carob]

You are ok as far as WIPO - you can find WIPO cases where the domain owner won because they registered the domain before the trademark was registered.

The problem you now have is selling the domain because when a new owner gets it the clock starts again from the transfer date - the new owner has got the domain after the trademark was registered and so can lose it at WIPO.

But if the TM holder wants the name from you, well, they'll have to buy it.

All this is assuming the TM holder was not already using the name for business for a while before formally registering their mark.

 

[DU]

The problem you now have is selling the domain because when a new owner gets it the clock starts again from the transfer date - the new owner has got the domain after the trademark was registered and so can lose it at WIPO.

That's an important point.

UDRP:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily"

If you sell through an auction like Sedo there are also legal documents you confirm to and sign (awareness of TMs and such). This may hold the seller accountable.

If you have a "generic" name then you would likely be fine; however, if at a later time you felt "protected" and changed usage to be confusingly similar you are asking for trouble.

Also. The US has common-law TM. In other words, it's not necessary to have a formal TM. So if the domain is NOT generic then you should be aware of this.

Finally. If you are genuinely concerned then consider using it legitimately and establishing its use and maybe register your own TM. This would protect you.

Do a search on reverse-hijacking. Where Cybersquatting is illegally sitting on someones TM, reverse-hijacking is illegally attempting to recover a domain surreptitiously.

I always think the UDRP is confusing:

"your domain name has been registered and is being used in bad faith."

A domain name has to be registered before you can use it in bad faith. It's not clear to me that that means "registered in bad faith" and "used in bad faith"

 

[cartoonz]

Well no WIPO action can be taken because...

Completely FALSE. While they may/may not succeed may be in question but they most assuredly can file a UDRP

You are ok as far as WIPO - you can find WIPO cases where the domain owner won because they registered the domain before the trademark was registered...

Not so much... there have been several cases where the Panelist used RENEWAL as a "new registration" to get around this... or even a transfer to a different Registrar... or a change in minor Registrant details reflected in the WhoIs... not really the intent of the Policy but it has been used before.

...I always think the UDRP is confusing:

"your domain name has been registered and is being used in bad faith."

A domain name has to be registered before you can use it in bad faith. It's not clear to me that that means "registered in bad faith" and "used in bad faith"

REGISTERED in bad faith refers to the intent of the Registrant at the time of Registration.

Subsequent actions by the Registrant determine USE.
..............

Unless you have some very compelling justification for registering the name in the first place and demonstrated that through use afterward - like uTube.com, you always could get beat up (especially if they have unlimited funds for litigation and you do not).

Just something to keep in mind...

 

[allboeing]

Completely FALSE. While they may/may not succeed may be in question but they most assuredly can file a UDRP



Not so much... there have been several cases where the Panelist used RENEWAL as a "new registration" to get around this... or even a transfer to a different Registrar... or a change in minor Registrant details reflected in the WhoIs... not really the intent of the Policy but it has been used before.



REGISTERED in bad faith refers to the intent of the Registrant at the time of Registration.

Subsequent actions by the Registrant determine USE.
..............

Unless you have some very compelling justification for registering the name in the first place and demonstrated that through use afterward - like uTube.com, you always could get beat up (especially if they have unlimited funds for litigation and you do not).

Just something to keep in mind...

You are incorrect if he goes and sets up apple2.com and uses it for selling boxes of apples(the fruit) apple can't take any action against him which is what you are implying.
Get your facts right before giving anyone advise.
I said they can't file a wipo as in they can't win one

 

[cartoonz]

You are incorrect if he goes and sets up apple2.com and uses it for selling boxes of apples(the fruit) apple can't take any action against him which is what you are implying.
Get your facts right before giving anyone advise.
I said they can't file a wipo as in they can't win one

Maybe it is you who needs to "get your facts right"...

there is NOTHING that prevents ANYONE from filing any kind of legal action or a UDRP, which is exactly what I said. Mitigating factors MAY determine if they succeed or not but they certainly can file.

I've been in this business since you were still in diapers and have seen a whole lot more than you... maybe you should keep that in mind before you get too full of yourself.

 

[DU]

You are incorrect if he goes and sets up apple2.com and uses it for selling boxes of apples(the fruit) apple can't take any action against him which is what you are implying.
Get your facts right before giving anyone advise.
I said they can't file a wipo as in they can't win one

Are you aware of a system/panel that prevents the filing of a UDRP Complaint even if it is frivolous?

If so please let everyone know how your facts are straight.

Last I checked - you file a UDRP Complaint and it's heard by a panel.
Whether you WIN one is 100% up to the panel reviewing the case. To say they are consistent and predictable would be an error of judgment. It is very possible that any complaint could be won.

Unless you have a better source of facts.

With your example they could argue that it's a deliberate attempt to prevent them from using their Trademark.

Unless you have facts to argue that too.

 

[carob]

Not so much... there have been several cases where the Panelist used RENEWAL as a "new registration" to get around this... or even a transfer to a different Registrar... or a change in minor Registrant details reflected in the WhoIs... not really the intent of the Policy but it has been used before.

Hi thanks for that info. WIPO is unpredictable and inconsistent and anyone can file the complaint who can afford the $1500 fee, and then your domain gets locked for probably two months.

There is no appeal against a WIPO decision so they can do what they like and it seems the panelists often have ties to the industries they have to judge. If you lose a domain at WIPO you can go to court afterwards and contest it at your own expense, and some people have won back domains that way.

AFAIK with WIPO it is a single panelist unless one of the parties pays more - probably double - to have it heard by a panel of three.

 

[enlytend]

Getting back on topic ...

i am curious on what happens if i own a domain name (ex. google.com) and then 2 years later a person or business copyrights or trademarks the term/phrase "google".

I suggest you read up on copyrights and trademarks. Copyright doesn't apply to domain names. Created works like articles, images, music, etc. are subject to copyright. Names, like the name of a business, product or group can be trademarks or service marks.

The best way to protect your domain is to use it (parking doesn't count) ... as long as you don't do so in a way that infringes on some existing business or product.