question Do active trademarks apply to expired domains

[Killstrike]

Hello, I am pretty new to domaining but anyways I was wondering about trademarks and how they apply to expired domains. I noticed a few interesting names I was thinking about buying but one of them I noticed had multiple companies that trademarked the name but for different use cases. I was curious if the domain registration originally dated back before the company's trademark and if they could UDRP the name.

Basically, the domain names I found were for a couple of companies that were acquired in a merger or that went out of business and I was not sure if it would be wise to even attempt to try and buy them.

 

[jberryhill]

I was curious if the domain registration originally dated back before the company's trademark and if they could UDRP the name.

First, nothing prevents someone from filing a UDRP, regardless of the circumstances.

The UDRP requires the complainant to prove three things...

1. Identity or similarity to their mark,

2. Lack of legitimate rights or interests by the registrant, and

3. The domain was registered and used in bad faith.

Now, on #1, the dates don't matter. #2 hinges on what, if anything, you are doing with the domain name. Leaving aside the question of use, the UDRP is now generally interpreted such that "registered in bad faith" implicitly requires the trademark (or significant pre-trademark publicity) to have existed prior to the time the current registrant acquired the domain name.

In other words, if you buy a domain name this week (absent buying some ongoing business along with the domain name), then nobody is going to care if the domain name was registered 20 years ago.

The essential question of the UDRP is "why did this person acquire this domain name?", so if you just bought a 20 year old domain name, that question is "why did you buy it now?" and not what someone else was thinking 20 years ago.

As with a lot of questions asked in this forum, this one - and many others - are addressed in what amounts to the UDRP FAQ published by WIPO with links to various decisions on each subject:

https://www.wipo.int/amc/en/domains/search/overview3.0#item38

3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?​

3.8.1 Domain names registered before a complainant accrues trademark rights​

Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)

[See also section 1.1.3.]

Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

(Emphasis Added)

 

[karmaco]

There is an inherent risk in buying any trademarked name that you will receive a UDRP. If you are not the original owner and registrant and you handle the name incorrectly ( contacting trademark holders, put on a page with ads etc) you have given them ammo to try to get it by udrp. No guarantee they win but its happened.

The risk to a full drop meaning age ends and its a rereg or DropCatch is even higher if one of those mark holders notices the new registration date.

Its a calculated risk and I would take that into consideration when bidding or buying. Don’t pay more than you are willing to lose. That applies to any acquisition not just trademarked ones.

 

[BrandEntrance.com]

This is a great question.

I am interested in following this up. There can be other problems that arise from buying bankrupt business names.

I registered a company with a business partner and we took a great name that had dropped. Before 2 weeks had gone we were getting emails and letters from companies that were owed money by the previous domain name owners.

I also run a domain sales market place with a name that had been put on a customer blacklist site sponsored by the govt.
I managed to get it removed from there. It's quite generic for this region so I felt it was worth fighting for. After 2 months I had the domain off that blacklist and a notice about the new owners not having anything to do with the previous owners. Now it is history.

I guess this happens a lot but I haven't read so much about it in here.
I would think that if the legal entity that owns the trademark has disappeared then the trademark disappears too. Otherwise these guys are still operating and can face the bankruptcy courts. I am not a lawyer so I don't know but there is a famous lawyer in this form. Maybe he could answer if he has the time.

It's not illegal to register a domain name. There are 1000's of markets in the world, tennis, baby shoes, pet shops etc. It is kinda dumb to register something that can upset a multinational company all the same.
I look forward to seeing some more answers in this thread.

 

[Killstrike]

There is an inherent risk in buying any trademarked name that you will receive a UDRP. If you are not the original owner and registrant and you handle the name incorrectly ( contacting trademark holders, put on a page with ads etc) you have given them ammo to try to get it by udrp. No guarantee they win but its happened.

The risk to a full drop meaning age ends and its a rereg or DropCatch is even higher if one of those mark holders notices the new registration date.

Its a calculated risk and I would take that into consideration when bidding or buying. Don’t pay more than you are willing to lose. That applies to any acquisition not just trademarked ones.

Since I've never personally bought an expired domain yet does the registration date change on those? Or is it only if it gets listed on a backorder auction

I guess my question is about the GoDaddy Expired Auctions and GoDaddy Closeout Auctions specifically