Legal question

[boker]

So, we are talking about two word financial terms that have different trademark owners. Seems like there is a trademark right for US and Canada, but in the same time the same 2 words are used in other countries like Belgium, Turkey and some asian countries in the same sector. Also, there is a difference between singular and plural, hyphen or without hyphen regarding trademark rights? Because it seems that the same terms are used in the same sector as singular or as plural, with hyphen or without hyphen. On top of that, excluding financial sector, the same two words are used as well in research, legal and technology sectors. So, who has the right to use the words and the trademark owner of the singular has trademark rights over the plural and the hyphen terms? The trademark rights owner from US and Canada has any right over companies using the same words in the same sector in other countries all over the world? Also, what will happen if one of the trademark rights holder will try to get your domain through a WIPO but until is processed you sell it to another trademark rights holder from another country or another sector?

 

[Dominique]

Hello @boker !

In regard to your last question, I can tell you its impossible to sell a domain to someone once a complaint is filed and after the Wipo Center requests the concerned registrar to “lock” the disputed domain name (so that the domain name will not be transferred to another registrant during the UDRP proceeding).

Within two business days of receiving the Wipo Centers request, the registrar must confirm to the Wipo Center that a lock has been applied and that the disputed domain name will remain locked during the pendency of the UDRP proceeding.


UDRP rules states:

The Provider shall submit a verification request to the Registrar. The verification request will include a request to Lock the domain name.

Within two (2) business days of receiving the Provider's verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining Pendency of the UDRP proceeding. Any updates to the Respondent's data, such as through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision.

(Lock means a set of measures that a registrar applies to a domain name, which prevents at a minimum any modification to the registrant and registrar information by the Respondent, but does not affect the resolution of the domain name or the renewal of the domain name.)


I hope this helps and Im sure someone will answer on your other questions !

 

[boker]

Hello @boker !

In regard to your last question, I can tell you its impossible to sell a domain to someone once a complaint is filed and after the Wipo Center requests the concerned registrar to “lock” the disputed domain name (so that the domain name will not be transferred to another registrant during the UDRP proceeding).

Within two business days of receiving the Wipo Centers request, the registrar must confirm to the Wipo Center that a lock has been applied and that the disputed domain name will remain locked during the pendency of the UDRP proceeding.


UDRP rules states:

The Provider shall submit a verification request to the Registrar. The verification request will include a request to Lock the domain name.

Within two (2) business days of receiving the Provider's verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining Pendency of the UDRP proceeding. Any updates to the Respondent's data, such as through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision.

(Lock means a set of measures that a registrar applies to a domain name, which prevents at a minimum any modification to the registrant and registrar information by the Respondent, but does not affect the resolution of the domain name or the renewal of the domain name.)


I hope this helps and Im sure someone will answer on your other questions !

Thanks for your reply...I know that it can not be moved after it's started. But lets say that I will forward it to one of the other TM owners for another sector, it has any effect? I mean it's important for what the domain is used for in the moment when the complaint was made or when the judges start checking it out? Also, the TM owner has any rights over the plural or hyphen EMD? I noticed that the hyphen is used for exactly the same thing in the same country, so probably not.

 

[Irene123]

No there is no way to do a deal of domain after WIPO and anyone have no right to undertake the domain while UDRP is processing.