First in time, First in right

[jjvirus]

Let's say i own abc.com with no trademark and someone else register a trademark under "ABC" name after my domain name registration,
Is that person allowed to take abc.com?
Regards

 

[Aggzzu]

Lol, I was just going to pen a thread like this. But you did it for me, three times. :D

Please, someone answer this.

 

[tinner666]

It's been happening. And if you have some info from news or other source about upcoming release, it shows bad faith and you can lose.

 

[DebX420]

Here's how it goes:

If you open a site, knowing someone else was going to open the same exact site, you loose in bad faith.

If its totally coincidental, then you will alright.

 

[jjvirus]

I'm supposing here that ABC trademark did Not Exist when I registered my domain.
ABC Trademark only existed after 2 years from my domain name registration.
In such case, is abc.com at risq?
If yes, how people on the internet protect their domain names using trademark, while we don't have universal trademark? (trademark exists in US or Europe, ...)
Don't tell me they create trademark in each country!!! lol
Thanks all,
Regards

 

[DebX420]

Its hard to say unless we know the 2 domains you're talking about.

 

[Peter]

if the domain you own was being used in a certain industry then effectively you have a trademark through usage.

As long as you can prove you owned and ran the site before the trademark (or the other site) was started there should not be a problem.

As people have said however it does not stop them trying. Also without knowing 00% of the facts of the case it would be hard to say. I would advise not to post it public however.

 

[AdoptableDomains]

As a general rule, yes if you register first, you have a good case that it wasn't a bad faith registration. The rules say the have complainant has to prove registered AND used in bad faith for UDRP rules. However, a couple other factors could override these factors.

1. There may be a TM through use that you don't know about that would mean you registered it after their TM went into effect.

2. The "AND" from above only applied to UDRP cases. It may not apply in a court of law.

3. UDRP panelists don't always interpret the above the same way.

 

[jberryhill]

http://domains.adrforum.com/domains/decisions/1154179.htm

The relevant time for the determination of whether or not Complainant has rights in a mark is the time that Respondent registered the disputed domain name. See Decani Monastery v. Info-Bridge, FA 639116 (Nat. Arb. Forum April 7, 2006) (where the Panel in its denial noted that the question to be answered is whether or not Complainant’s rights existed at the time of Respondent’s domain name registration). In this case, Respondent registered the <xoft.com> domain name on September 28, 2004. The question for this Panel is what rights had Complainant demonstrated in the mark XOFT on that date? Complainant’s earliest trademark registration is based on an Intent-to-Use application for XOFT, filed on September 16, 2004, which records a first use date of December 2005. While Complainant’s filing date is 12 days before Respondent’s domain name registration, the filing is only based on the intent to use, not enough to constitute rights superior to Respondent’s, when Complainant’s first recorded commercial use is at least 14 months later. What further frustrates Complainant’s claim to superior rights is its previous abandonment of two trademark applications for XOFT on August 20, 2003, and again on May 13, 2004. Even if Respondent had known of Complainant’s pending trademark application when it filed the disputed domain name, which Respondent denies, it would have been reasonable to suspect that Complainant might again be unable to maintain the application, quite possibly for lack of commercial use.



While Complainant could have demonstrated to the USPTO, or to this Panel, that it had established rights in the mark prior to December 2005, it did not. All of the evidence in the record suggests first commercial use of XOFT by Complainant beginning in 2005. See Saint Francis Hosp. and Med. Ctr. v. Registrant, D2006-0543, (WIPO June 19, 2006) (where the Panel found that no evidence was produced to support allegation of Complainant’s superior common law rights and denied the Complaint).



If the above is not enough, Respondent also provided evidence of its back-order for the <xoft.com> domain name dated August 23, 2004, before Complainant even filed its eventually-successful Intent-to-Use application for XOFT. When the domain name became available, Respondent became the successful bidder at auction for the domain name <xoft.com>.



For all of the above reasons, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i) and its Complaint therefore fails, making it unnecessary to examine the remaining two elements of the Policy.

 

[jjvirus]

Thanks all for your time,
1) but how can I know that none in the world has a trademark same as my domain name?
USPTO offers trademarks in US, how can I search in the rest of the world?
Things like that musn't be complicated, is there any reference or any place to search?
People, it's 2008! It's not logical to search for trademarks in all countries!! How can I be sure that I can use my domain name with no trademark bad faith with anyone else before I start my investment?
2) In case, I'm sure that none has a trademark same as my domain name, is it necessarily to create a trademark? If yes, where? Does USPTO trademark enough or I need another one for Europe and for the rest of the world?
Sorry People for all these questions, I'm new in domain names world, and unfortunately NO reference gave me a clear answer,
Again thanks all, regards.