Cyberquatting by accident ?

[dotnom]

One of my customers before he completes the purchase of a LLL.com he emailed several companies that may be interested to rent the name. The LLL is a total generic term and related with the ISO 3166-1 alpha-3 codes (3 chars) of a country

The companies that he emailed were from that country
I told him that he rushed to promote it and he should wait a bit before he proceed to any further action

My thoughts/questions about this issue are these :

1. In his email he stated that he has the domain from 2008 even at the whois shows 199X. Does this statement takes back the privileges of the old registration so that if there is a regional company with these LLL to pretend this is a cyber squatting case ?

2. Because it's a different country can someone file a trademark after his email and later claim that it’s a cyber squatting ?

3. If he goes and apply for a trademark now in another country (from the one this domain is related) under several trademark categories does this protect him from possible trademark claims from companies in that country ?

 

[flamewalker]

1: Anyone can claim anything, doesn't mean it will stick. The fact that he stated he has owned it since this year shouldn't make any difference in a UDRP case, what will matter is how HE uses it. IE he needs to make sure any parking page doesn't use terms or ads that violate a tm, especially in the country he is trying to target.

2: See point in number one... yes anyone can do/say anything. If he finds that someone has filed a TM in order to reverse hijack the name, he needs to make sure his ads/content doesn't infringe the new tm. If his use of the domain predates the TM, it should work in his favor if they decide to UDRP after the fact. Perhaps someone with more experience or a lawyer can comment on how to handle a reverse hijacking attempt.

3: Again, see point in number one. If he files and gets a TM and uses it for that purpose, he will/should be protected for that/those uses. If he were to change its use to infringe on another TM, then he can't say he has a tm so hes ok... hes not, he is now infringing. Also, at least in the US, you have to show use in commerce to get a TM... so just filing for a TM (at least in the US) without usage will not be granted.

 

[OnlineDomainCom]

1. YES!!! Bad move. Many UDRP decisions are considering change of ownership as a new registration. So you don't go around advertising it.
2. No
3. No

 

[Takwa]

damn I thought I will be safeproof by buying aged domains

 

[OnlineDomainCom]

As long as the complainant doesn't notice the registrant change, you are safe.

 

[flamewalker]

"Safe" is relative to the intelligence of the arbitrator