Domain ownership then someone else trademarked

[meanieme]

When I purchased a domain name "xxxxx"+.com, there were no active trademarks for that name "xxxxx", there was an abandoned /dead trademark on that name at the time.

Fast forward 2 years later now someone else just trademarked "xxxxx". But since I purchased this domain name well before this new trademark filing, am I protected? Or can this person with the new trademark try to force me to turn over my domain name.

TIA!

 

[meanieme]

Ah, so I gather you've been in communication with this person.
In the context of "what kinds of evidence are going to be important in a dispute proceeding" the communications between the parties are going to be pretty important.

To answer your questions:

1) I have never communicated with this person and do not have plans to reach out to him. I only know of the TM because I landed on his website and see he put the TM mark next to the word. I know that he has not registered with USPTO but that he is thinking about it because he discussed this openly with others in a discussion forum.

2) The only indication I have that he's "been using the TM word on their website since 2020" is through archive.org. Anytime before 2020, he did not have a website.

3) When I purchased the domain name in 2021, I was not aware of his website, and hence I was not aware of the TM mark he put next to the word.

4) I purchased the domain name in 2021. It had been initially created and registered back in 2011. Looking at archive.org, the domain name had always just been a parked page. I don't know what the previous owners intended to do with the domain name/word I purchased.

You're saying it doesn't matters in a UDRP dispute that the domain name I purchased has existied since 2011 well before he TM the word. Fact is, I had no idea about his TM, his website, or his intent to eventually sell goods/services using the word.

 

[jberryhill]

because he discussed this openly with others in a discussion forum.

Ah, that's interesting. Then his public statements likely contain a lot of relevant information to evaluating his claim. He's probably made a lot of other statements in that forum which would be important information to consider in working up a legal opinion.

You're saying it doesn't matters in a UDRP dispute that the domain name I purchased has existied since 2011 well before he TM the word. Fact is, I had no idea about his TM, his website, or his intent to eventually sell goods/services using the word.

The first part is correct. What matters in a UDRP dispute is your state of mind, as might be inferred by objective evidence, when you acquired the domain name. What someone else was doing since 2011 is generally not relevant.

While I certainly don't doubt that you acquired the name for reasons unrelated to whatever this guy is up to, you are the only one who knows what goes on in your head. The way the rest of the world determines intent is by looking at what you might have been aware of based on external evidence.

That, again, brings us to "what sort of a term are we dealing with," which would also be an important consideration in the event someone were seeking an actual legal opinion on a particular circumstance.

In other words, a UDRP panel is going to look at:

a. All the possible reasons why the respondent might have registered the name because it is the complainant's trademark, and

b. All the possible reasons why the respondent might have registered the domain name because of some other rationale,

...and decide which of those is more likely and supported by evidence. So if the domain name is a word, combination of words, surname, catchphrase, three- or four- letter string (and not something like IBM), there are reasons to believe that someone who registers names or is in the habit of registering names like that ("here's a list of similar other names I own") registered the name for reasons consistent with that rationale. If this guy simply had the word on a website somewhere and some kind of aspirational plan of getting around to using it as the name of some kind of goods or services at the time you registered the domain name then it is unlikely he would prevail.

However, if it is a relatively inherently distinctive term, then his junior (to your domain name) trademark registration some day in the future may diminish the resale value of your domain name to anyone else who might not want to buy a distinctive term that is already a registered mark.

That was the dynamic of the more than decade long standoff which ultimately worked out well for this domain registrant:

https://www.adrforum.com/domaindecisions/547889.htm

 

[Monster360]

When I purchased a domain name "xxxxx"+.com, there were no active trademarks for that name "xxxxx", there was an abandoned /dead trademark on that name at the time.

Fast forward 2 years later now someone else just trademarked "xxxxx". But since I purchased this domain name well before this new trademark filing, am I protected? Or can this person with the new trademark try to force me to turn over my domain name.

TIA!

Man, you have nothing to worry about actually that's the position we all try to be in, if I were you I would reach out and it would be ignorant of them not to purchase their trademark xxxxx.com just don't let them low ball you

 

[Monster360]

I'm just surprised they haven't tried to reach out to you yet regarding your domain. You are sure it's been trademarked, what's the name? Are you trying to sell it? or do you actively have a site with it?

 

[Altetra]

Variations on this question have been asked countless times in this forum.



From this, I assume that you are looking at the USPTO database and making conclusions based on data records in that database, instead of using Google to figure out whether someone is using something as a trademark.

Long story short - the USPTO does not grant "trademarks". If you have a trademark you might, or might not, decide you want to register that trademark with the USPTO to obtain a registration.

But "having a trademark" and "having a registration at the USPTO" are not the same thing.



It would help to explain what you mean by that.

Are you saying that someone just started using the term as a mark?

Or are you saying that someone recently filed an application to register a mark?

If you are saying the second thing, then what kind of application is it? Is it a 1(a) use-based application, or is it a 1(b) intent-to-use application? If it is a 1(a), then did you look at the alleged date of first use of the mark, along with the specimen, to figure out what they are doing and how long they might have been doing it? If it is a 1(b), did you try to do some additional searching and figure out whether they might have started using it and when?

Is it registered or merely recently-filed? If it is pending, but not registered, has an Official Action been issued in the case? If so, was it refused on grounds that are difficult to overcome?

What kind of trademark is it? Is it descriptive, suggestive, arbitrary or fanciful? Is it susceptible to use with other goods or services? If it is descriptive, how long have they been using the mark and how well known are they?

In general, no one is going to be able to obtain your domain name in a UDRP proceeding if they did not have trademark rights at the time you registered the domain name, absent some special cases where there is insider knowledge or where there was significant pre-launch publicity of the goods/services.

Unfortunately, your question does not provide enough useful information to get anywhere near an answer that might be appropriate to the relevant circumstances. The way these questions typically go here at Namepros is that the person asking the question incorrectly believes everything in the USPTO database with "LIVE" next to it is a trademark, or the person is using some secondary system like Trademarkia, which doesn't provide a lot of the relevant information from the underlying USPTO record.

In the next stage of this classic question formula, several randos will check in to say that you are fine.

How many rules from the ICANN policy should be proven, until the domain gets ruled to be transferred to complainant, is it 1,2 or all 3 must be proven?
Imean this 3 rules, thank you!
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

 

[jberryhill]

Good question. All three.

 

[meanieme]

I'm just surprised they haven't tried to reach out to you yet regarding your domain. You are sure it's been trademarked, what's the name? Are you trying to sell it? or do you actively have a site with it?

I have a site established. I'm not trying to sell it. If they approach me with a reasonable offer, I may consider selling.

 

[alcy]

for tm like here...if we buy domain and not just register it then in case of filings wouldnt it be the other older previous owner reg date that counts....

and not just the date from purchase time????

 

[meanieme]

for tm like here...if we buy domain and not just register it then in case of filings wouldnt it be the other older previous owner reg date that counts....

and not just the date from purchase time????

that's what I thought/hoping as well but doesn't seem to be the case, seems to be all about intent and prior knowledge of existing TMs

 

[jberryhill]

wouldnt it be the other older previous owner reg date that counts....

In a UDRP? No.

Above, in this thread, is a link to section 3.8.1 of the WIPO Overview of common UDRP issues.

Let's try this again...

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.)

...

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.

 

[jberryhill]

Fact is, I had no idea about his TM, his website, or his intent to eventually sell goods/services using the word.

So, here's a good example of a decision, just out today, that is an example of the types of things a UDRP panel might consider, when dealing with marks that were not registered at the time the domain name was acquired:

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-2594.pdf

The difficulty confronting the Complainant is that, generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

However, the Respondent acquired the disputed domain name a month or so before the Complainant was incorporated on March 30, 202,2 and even before the Complainant’s associated company applied to register the trademarks on March 28, 2022.

Perhaps recognising this difficulty, the Complainant has pointed out that Messrs Ovalle, Ibanez, and Delgado started a WhatsApp chat group under the name “Stable” on January 20, 2022. As Annex R to the Complaint (which is the proof the Complainant advances to corroborate the date the WhatsApp chat group was started) states on its face, however, WhatsApp “[m]essages and calls are end-toend encrypted. No one outside of this chat, not even WhatsApp, can read or listen to them. ….”

The Panel considers this feature of WhatsApp is well-known.

The Complainant has not made any attempt to suggest that the Respondent was, or became, a member of the WhatsApp chat group before the Respondent paid over USD one million to acquire the disputed domain name.

There does not appear from the record in this case to have been any other public circumstance from which the Respondent could have become aware of the plans for the Complainant’s project. Nor has there been any suggestion that the Respondent, or someone associated with it, was privy to information about the plans to use “Stable” being developed by the Complainant’s backers.

---

So, a UDRP panel will look at "how well known or widely used was the mark at the time" and "what is the likelihood the Respondent would have known of that use".

This was also a case where the domain name is a single short dictionary word - stable.com - so the strength of the evidence showing a bad faith intent by the Respondent would also have to be proportionately higher than if it was an obscure or made-up term.

Notice how that key part of the decision makes no reference to anything having to do with trademark registration.

I hope that someday, domainers and the "someone told me" consultancy gives up their insane and usually irrelevant obsession with trademark registration databases.

 

[meanieme]

So, here's a good example of a decision, just out today, that is an example of the types of things a UDRP panel might consider, when dealing with marks that were not registered at the time the domain name was acquired:

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-2594.pdf

The difficulty confronting the Complainant is that, generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

However, the Respondent acquired the disputed domain name a month or so before the Complainant was incorporated on March 30, 202,2 and even before the Complainant’s associated company applied to register the trademarks on March 28, 2022.

Perhaps recognising this difficulty, the Complainant has pointed out that Messrs Ovalle, Ibanez, and Delgado started a WhatsApp chat group under the name “Stable” on January 20, 2022. As Annex R to the Complaint (which is the proof the Complainant advances to corroborate the date the WhatsApp chat group was started) states on its face, however, WhatsApp “[m]essages and calls are end-toend encrypted. No one outside of this chat, not even WhatsApp, can read or listen to them. ….”

The Panel considers this feature of WhatsApp is well-known.

The Complainant has not made any attempt to suggest that the Respondent was, or became, a member of the WhatsApp chat group before the Respondent paid over USD one million to acquire the disputed domain name.

There does not appear from the record in this case to have been any other public circumstance from which the Respondent could have become aware of the plans for the Complainant’s project. Nor has there been any suggestion that the Respondent, or someone associated with it, was privy to information about the plans to use “Stable” being developed by the Complainant’s backers.

---

So, a UDRP panel will look at "how well known or widely used was the mark at the time" and "what is the likelihood the Respondent would have known of that use".

This was also a case where the domain name is a single short dictionary word - stable.com - so the strength of the evidence showing a bad faith intent by the Respondent would also have to be proportionately higher than if it was an obscure or made-up term.

Notice how that key part of the decision makes no reference to anything having to do with trademark registration.

I hope that someday, domainers and the "someone told me" consultancy gives up their insane and usually irrelevant obsession with trademark registration databases.

So it comes down to "knowledge" and "burden of proof". Makes total fair sense. The calamity in this case is that the Respondent purchased the domain name for $1M and the Complainant only wanted to offer $900. Don't be cheap, if the domain is that important to you, just pay up.