Interesting situation

[mixon]

Hello,

I would like you to imagine this situation:

Domain name is registered by the owner. During the normal activity of registered domain name, another person/company registers their trademark.
The domain name drops, but just after the drop (releasing the domain), domain name is reregistered by its first owner. Of course whois data shows only the latest date of registration. And now the another person/company thinks that he's got the rights to this domain name. And sends the letter with order for the owner to cancel the domain name due to the trademark registration. Domain owner knows that he was first (has got registrar support information, and it can be proven in the court by the Registrar (imagine the costs of registrar and owner subpoenas to get that information)) . Another person thinks he's first.

Who's the winner?

And yes, it is a real situation, just made it more universal.

 

[dewd]

id say the trademark owner, but really depends on the domain name

if the domain name is universal and can be used in many ways, and does not interfere with the TM owners company, then you should be good

 

[slantednet]

Alot would weigh on what the original domain owner did with the domain. The issue of the name dropping then being re-registered isn't really an issue, because the records can prove who had it first.

However, if the original domain owner sat on his domain, maybe just pointing it at a parking page, then the TM owner would probably get the right to it, because he's established a business presence/trade upon the name prior to anyone else.

If the domain owner had established or attempted to establish a presence under the name, PRIOR to the "registered" TM holder, then the registered TM holder doesn't really have a claim to the mark.

Remember, TM's/SM's/Copyrights DO NOT have to be "registered" with anyone to be enforced. You have a TM as soon as you assert ownership of it by placing your little "TM" or "SM" after the logo/name/whatever and start using it publicly. (TM's are for tangible objects, SM's are for services)

So, back to your hypo, the domain owner, if using his domain as a TM/SM prior to the registered TM would have "rights" to the domain, and ultimately the registered TM holder can lose his registration.

 

[Dave_Z]

A domain name doesn't assign absolute exclusive legal rights to anyone except
for its currently registered owner to do as they see fit. But others can try to
prove they have greater rights than the domain's current registrant.

As to who will win, no one can really say until it reaches legal dispute or an
agreement has been made.

 

[mixon]

Hmmm

Thank you for your replies and welcome more. Well, as the owner (ok, me) has got the company which operates in the field included in the name of the domain, and before the parking page (which is now) there were some information on the site. As the plans changed, it got parked. There are still some considerations about developing the site, but depending on the current legal situation. Selling this domain name directly to TM company is rather in good faith - it lets them secure their business initiatives.

I don't have to say, that the company which feels like having rights to the
domain name is much much much bigger (worldwide).

Do you have any experiences in getting some archive information about domain ownership from registrars by third parties? Does it always involve subpoena (as I was instructed by the registrar)?

Or have you been in the similar situation?

 

[DNQuest.com]

A domain name doesn't assign absolute exclusive legal rights to anyone except
for its currently registered owner to do as they see fit. But others can try to
prove they have greater rights than the domain's current registrant.

As to who will win, no one can really say until it reaches legal dispute or an
agreement has been made.

Absolutely wrong Dave and you need to stop saying that. It is NOT LEGAL to use someone elses TM for profit. That is why so many "legal owners" of domains lose the domain. Because they DO NOT OWN THE RIGHT to use that name. It is illegal and punishable by a $100,000 fiine. So please stop saying that. You are giving the wrong impression to people who really want to know or learn.

Thank you for your replies and welcome more. Well, as the owner (ok, me) has got the company which operates in the field included in the name of the domain, and before the parking page (which is now) there were some information on the site. As the plans changed, it got parked. There are still some considerations about developing the site, but depending on the current legal situation. Selling this domain name directly to TM company is rather in good faith - it lets them secure their business initiatives.

I don't have to say, that the company which feels like having rights to the
domain name is much much much bigger (worldwide).

Do you have any experiences in getting some archive information about domain ownership from registrars by third parties? Does it always involve subpoena (as I was instructed by the registrar)?

Or have you been in the similar situation?

To be honest, if the "big business" was in operation before the domain was registered, they do have a TM regardless if they file or not. If the domain was registered after and you offered teh domain to the TM holder, that is bad faith regardless of your intentions. Now if they gave you an offer, that would be different.

I could be mistaken, but getting information from a 3rd party may require a subpoena. Companies cannot release private information. But is the company has been around for a while, I honestly don't think that it matters. There are too many uncertain vaiables to give a concrete answer to your query.

 

[Dave_Z]

Absolutely wrong Dave and you need to stop saying that. It is NOT LEGAL to use someone elses TM for profit. That is why so many "legal owners" of domains lose the domain. Because they DO NOT OWN THE RIGHT to use that name. It is illegal and punishable by a $100,000 fiine. So please stop saying that. You are giving the wrong impression to people who really want to know or learn.

Sorry about that. I should've explained further.

I stand by my original saying that a domain name doesn't assign absolute legal
rights to anyone except to its current registrant. What I should've added is
that there are laws drawing the lines on what a domain's registrant can and
can't do with the domain.

I say that because there are some people out there who believe that having a
trademark for the namesake gives them the absolute right to prevent anyone
from registering or using any and all domains bearing their trademark. It's as if
having a trademark gives them exclusive privileges.

Take the fallwell.com dispute. Rev. Falwell filed a UDRP and won a court case
for it because the domain's registrant's use of the domain allegedly infringed
on Falwell's trademark rights.

But Paul Levy eventually appealed and won, proving the domain didn't infringe
on Falwell's trademark rights at all. Falwell may have had trademark rights to
the domain, but the domain was not used in bad faith according to standards.

Then you've got that billionaire who seems to be going after UK-based domain
registrants whose domains bear the word "easy".

In this case, I'm just saying a trademark holder doesn't have any absolute
exclusive legal rights to the domain name. But they can still prove they have
greater rights than the domain's current registrant by showing they do have
trademark rights and the registrant had an "illegal" use for the name.

If they prove that, then they can order the domain's transfer or cancellation.

But thanks for pointing that out. I should've been more elaborate.

 

[mixon]

Some details which should be kept in mind probably

Absolutely wrong Dave and you need to stop saying that. It is NOT LEGAL to use someone elses TM for profit. That is why so many "legal owners" of domains lose the domain. Because they DO NOT OWN THE RIGHT to use that name. It is illegal and punishable by a $100,000 fiine. So please stop saying that. You are giving the wrong impression to people who really want to know or learn.

Well, I am not a lawyer so I only can think that domain name owners has got their rights, but there are exclusions depending on the rights of the other parties. Wow

I think I didn't get the wrong impression (kept the general idea of ownership rights), but it's true that I want to know and learn something...

To be honest, if the "big business" was in operation before the domain was registered, they do have a TM regardless if they file or not. If the domain was registered after and you offered teh domain to the TM holder, that is bad faith regardless of your intentions. Now if they gave you an offer, that would be different.

At this point I must say, that that domain name has NOTHING to do with company business name or anything, its composed from two popularly used words. In this context, and also idea, that they didn't even use these words before registering their TM.

I am also trying to keep the general thoughts of DNQuest.com (tm) that all people reading this forum will get more information, but in this case, I think the most important think is the sequence of the events:
I will try to write down the full sequence:
1. I am registering the domain name (whis is related to my business)
2. After many months, company is registering a trademark (my domain name is live and kicking)
3. Domain name drops, and (almost immediately after releasing) I am registering the same domain name again (it was the holidays season reason, and there are some periods of time in which registration cannot be done or costs hunderds of dollars)
4. Afer many months, I decide to sell the domain name (naturally, in a good faith of securing their business - as I could sell it to someone bad instead).
5. Instead of the reply, I get the letter asking for removing the domain name

I hope it is clear, and the point 1 and 2 are actually the most important.

The main point is why the company and the registering institution didn't realised the existence of the domain name before registering the TM (which is ctually not a domain name but graphic-literal TM)? In other words, the company registered their TM long months AFTER I registered my domain name (what happened later has nothing to do with it I think).
It seems that company acts in bad faith calling their unsure rights - TM registration was made after my domain name registration.

I also cannot imagine who could take the money for registering the TM for words which are used popularly in domain names, and the real life: tens of thousands of expressions (exact "word1 word2" web searching for example).

I could be mistaken, but getting information from a 3rd party may require a subpoena. Companies cannot release private information. But is the company has been around for a while, I honestly don't think that it matters. There are too many uncertain vaiables to give a concrete answer to your query.

Exactly, the registrar informed me that if someone will want to get the archive information about the previous existance of the domain name from them, they will neeed subpoena.

I wrote a pretty long post sorry, but if you have your thoughts and experiences, please write them too. It seems also that Davezan managed to extend his reply. Thanks!