Domain Reg BEFORE The TM Was Applied....Am I OK??

[Nattydomain]

Ok just got a domain for a nice semi generic and it was reg in 1-1-04...A game for both cell phones and now the WII came out in 2005. The application for the TM was made in 10-2004 (9 months AFTER the domain was reg)

Am I safe in keeping this domain......Also for their website they use the hyphen - in the name

If I am safe what are the odds of selling them the acutal name again since it was reg 9 months prior to the tm.....

Thanx

 

[owntype]

I'm interested in the question as well. I have asked the similar question before, no clear answer and references.

According to WIPO, if the complainant can prove each of the following elements they can win the domain.

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

It doesn't show if the timing of domain registration matters though.

 

[bmugford]

There are far to many factors to accurately answer the question without knowing.

Brad

 

[banners]

one thing that will help is not monetizing on their name, i would assume if you can use it in some other legit way you might be alright. These things can get tricky.

Approaching them for $$ could be a really bad thing if you would like to keep it. THis kind of thing can be misrepresented and used against you.

It would help to know the domain name among other things.

Just because someone has a trade mark does not always mean you cannot use it in a different industry.

GL

 

[Ms Domainer]

*

Educated guess:

I believe that you are not protected by the 2004 registration (unless it was you who regged it in 2004). If you picked this up recently, then the company could argue bad faith during a UDRP because you knew that it was a TM (even if the original registrant did not).

As bmugford said, without knowing specific details, it's hard to say how strong the TM infringement, if any, may be.

Maybe an intellectual property lawyer could address this better.

*

 

[Nattydomain]

Thanx for the replies.......I rather not give the domain name out just yet but lets say its a sport of sorts and the term is used in the sport...... the game itself is of a term used for this sport so not sure either how the game mfg could use the term and trademark it.....sort of like say "bunting" is a term used in baseball but how could you trademark that?

 

[JoshuaPz]

I'd speak to a lawyer about it, but IMHO you're not in very good shape.

If you attempt to sell the domain to the TM holder, as you proposed, that is a blatant manifestation of bad faith.

If you elect to park the domain and the TM holder's PPC ads show up on your parked page even once (the TM holder can make this happen fairly easily by bidding on AdWords), that also demonstrably proves bad faith.

Even if you choose neither of the above paths -- yes, there is legal precedent for holders of domains names corresponding to trademarks to be exonerated if the registration had taken place before the TM's filing. In this case, however, you were clearly not the original registrant -- meaning, you either (a) Are culpable for negligence, having failed to perform your due diligence to ensure your purchase stood clear of infringement, or (b) Willfully attempted to profit from an established trademark. Neither possibility will do you much favor should you be taken to court.

 

[TestCase]

There are a number of similar threads about this same type of situation in "Legal Issues & Disputes"

The general response from those with actual law degrees seems be, "Well it depends..."
(ie. There are a lot of issues that come in to play.)

As suggested above, seek REAL legal counsel (and do NOT park it in the mean time).

 

[Nattydomain]

I here you all.....in fact just got the domain for the semi geneirc meaning but only looked up the trademark when i saw who owns the hyphen...... will just keep it in the dark.

 

[Dave_Z]

http://www.namepros.com/legal-issue...gpcs-tm-has-got-me-screaming.html#post2957285

http://www.namepros.com/legal-issues-and-disputes/405462-hypothetical-question.html#post2387326