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!

 

[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.