Registering A Name Then Someone TM's It

[CharlieA]

What would happen if I regged a name and in the future someone trademarks that name? Who would have the rights to the domain?

 

[broke-r]

That would be you, since there was no trademark infrigement at the time you had registered the domain name.

I'm not sure what happens next though... Let's say that a company trademarked that name: From what I know, if you try to develop the domain name into a business which is similar/operating in the same market with that company then you're going to have troubles.
E.g. if the company is a toy manufacturer and you build a site selling toys, right after the company trademarked the name/incorporated, this is illegal and they can sue you EVEN THOUGH you have registered that domain first! But if you were selling toys from the beginning then you have nothing to worry again.

 

[CharlieA]

Good news, thanks. I asked because I was reading a post where someone regged a ton of names that contain a term that might possibly be TM'd by a big company soon.

 

[broke-r]

Good news, thanks. I asked because I was reading a post where someone regged a ton of names that contain a term that might possibly be TM'd by a big company soon.

That is good news CharlieA! Are we talking for a Delaware company? If so, I think he is very luckily to get $$$$ for the domain!

 

[Broker]

I'm in the same cituation, I have a domain I know will be wanted within the next two years. A major casino opened up in my neighborhood and they said on the grand opening the hotel is coming next. So I have theirnamehotel.com

But theirname (their name) is a city name with another non TMable? word. So I'm not sure really.

I'm such a squatter :lol: May be my first c@d :notme:

 

[DNQuest.com]

HasROB, there is a huge difference between the 2 cases... you are clearly squatting, the OP is asking about a name that was not in exsistance at the time he registered the domain.

 

[Broker]

HasROB, there is a huge difference between the 2 cases... you are clearly squatting, the OP is asking about a name that was not in exsistance at the time he registered the domain.

Correct, but is it a legal squat? Reason I ask, the first two words are non tm words, but with the third word (hotel) added, it's likey they can TM it. So, it's kinda the same.

 

[-JC-]

What would happen if I regged a name and in the future someone trademarks that name? Who would have the rights to the domain?

If it is a name you registered before a trademark was proposed and issued, then you will have all rights to the name. That is, if you did not register the name with insider info and intended to squat on the name because you knew there was going to be a trade mark issued by the company in question.

One of the most well known cases of a huge corporation trying to obtain a name they had no rights to because the registrant had registered the name prior to a trade mark or global brand recognition is nissan.com

Check out the legal stories here: http://nissan.com/Digest/The_Story.php

Hope that helps answers some of your questions and concerns.

Correct, but is it a legal squat? Reason I ask, the first two words are non tm words, but with the third word (hotel) added, it's likey they can TM it. So, it's kinda the same.

If the Casino can prove you registered the name with the intentions of selling it to them in the future then they can submit a UDRP and will have a good chance of getting the domain name.

 

[CharlieA]

That was a good read. I bet Nissan (car company) is steaming, lol. nissan.com has got to be worth millions.

 

[Ronald Regging]

That was a good read. I bet Nissan (car company) is steaming, lol. nissan.com has got to be worth millions.

It's worth nothing. If he sells it to a 3rd party, they'll lose it right away to Nissan, because they have no rights to it. The current owner may have established his rights, but a new owner would not. Also, he can't advertise anything remotely related to automobiles and whatever else Nissan makes, so he's not going to get rich from ads. I dont think he has any interest in selling and I don't think anyone with a brain (other than Nissan) would have any interest in buying it from him.

 

[-JC-]

According to Nissan Motors back in 2002 it was worth a minimum of 10,000,000 to them in the form of damages ... and worth countless hundreds of thousands in court and attorney costs to try and obtain.

Still, they have no rights to the name and the end result is in the favor of Mr. Nissan and his company.

I do fear that if Mr. Nissan ever tries to sell the domain Nissan.com (weither by its self or packaged with the company), then Nissan Motors will probably try to take him to court again. Darn corporations! It is companies like those that give all corporations a bad name.

It's worth nothing. If he sells it to a 3rd party, they'll lose it right away to Nissan, because they have no rights to it. The current owner may have established his rights, but a new owner would not. Also, he can't advertise anything remotely related to automobiles and whatever else Nissan makes, so he's not going to get rich from ads. I dont think he has any interest in selling and I don't think anyone with a brain (other than Nissan) would have any interest in buying it from him.

If the business Nissan Computers was sold with the name, then the new owners would have a shot at keeping it. But, I doubt anyone would want the name knowing that Nissan Motors has a history of trying to obtain the domain trhough suits.

 

[Dave_Z]

One of the most well known cases of a huge corporation trying to obtain a name they had no rights to because the registrant had registered the name prior to a trade mark or global brand recognition is nissan.com

Are you sure the Japanese car maker had no rights to the domain name at
all? You might want to read and review the "last" decision:

http://www.citizen.org/documents/CourtofAppealsRulingNissanMotorvNissanComputer.pdf

If none of you still got it, then the thread below might help:

http://www.namepros.com/legal-issue...an-vs-nissan-once-again.html?highlight=nissan

 

[-JC-]

Are you sure the Japanese car maker had no rights to the domain name at
all? You might want to read and review the "last" decision:

http://www.citizen.org/documents/CourtofAppealsRulingNissanMotorvNissanComputer.pdf

If none of you still got it, then the thread below might help:

http://www.namepros.com/legal-issue...an-vs-nissan-once-again.html?highlight=nissan

Maybe you should re-read the entire pdf file again. Yes, they have no rights of claim to the domain name ... still. They may hold TM rights to the name Nissan for auto uses ... but the domain name Nissan.com still resides with Nissan Computers, and Nissan Computers can now use the domain for commercial (non-auto) uses and can post links and information to what ever they wish to ... even information that might defame Nissan Motors (court information and what not).

 

[DNQuest.com]

It's worth nothing. If he sells it to a 3rd party, they'll lose it right away to Nissan, because they have no rights to it. The current owner may have established his rights, but a new owner would not. Also, he can't advertise anything remotely related to automobiles and whatever else Nissan makes, so he's not going to get rich from ads. I dont think he has any interest in selling and I don't think anyone with a brain (other than Nissan) would have any interest in buying it from him.

Actually, if someone bought the company with all rights and GOODWILL (which should be written as such), the goodwill can be transfered to a new owner.

But if the domain was sold by itself, then the new owner would not have rights to the name and Nissan could go after them.

 

[Dave_Z]

Maybe you should re-read the entire pdf file again. Yes, they have no rights of claim to the domain name ... still. They may hold TM rights to the name Nissan for auto uses ... but the domain name Nissan.com still resides with Nissan Computers, and Nissan Computers can now use the domain for commercial (non-auto) uses and can post links and information to what ever they wish to ... even information that might defame Nissan Motors (court information and what not).

I've read that pdf file at least 3 times, thank you. Maybe we just see things a
bit differently, that's fine.

Originally the car maker had no claims towards the domain name. But once the
site displayed car ads, that's when they finally "gained" the right.

Mr. Nissan is fortunate to still retain the domain name. But it definitely cost a
lot for him, and he still stands to lose it the moment it shows car ads or tries
to sell it to someone.

But here's my real main point: it's a myth to believe registering a domain name
before a trademark has been established will "automatically" shield you from
losing it. One condition doesn't necessarily dictate the entire outcome.

I finally remember one UDRP decision where the respondent lost, even though
the domain name was registered way before the complainant had established
trademark rights to the term:

http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0073.html

Probably the main reason why the respondent lost:

Since Complainant has provided no evidence to support its allegation that its common law trademark rights in its mark accrued as early as 1998, Respondent’s claim that she registered the disputed domain name before the registration date of Complainant’s mark might support a finding that her registration of a common phrase gave her rights in the disputed domain name. Not only have panelists almost uniformly rejected importation of any notion of constructive notice arising from mark registration into determination rights or lack of bad faith under the Policy, Complainant’s use of common words in its mark makes it more likely that a member of the public, even a competitor, might innocently have registered that phrase as a domain name.

But Respondent has frankly acknowledged that she knew of Complainant’s mark and business before registering the disputed domain name. At pages 3-4 of the Response,7 she describes the circumstances under which she registered the disputed domain name

The respondent might have won if s/he didn't make that acknowlegment.

So to answer CharlieA's question, s/he retains the domain until someone files a
trademark dispute and possibly wins it. Possibly, anyway.

 

[Lyn]

Let me put up a real life scenario.

I have a xxxxx.com.au domain name that I am trademarking. The xxxxx.com version of my domain name is held be a domain broker. He knows my intention to purchase the .com version and is asking a 5 figure amount amount. I was advised to wait until my TM is finally approved and put him on notice that the domain name can't be used in any way shape or form that closely relates to my TM. As this name is very industry specific, it should make the name worthless to sell. The domain isn't currently used and doesn't have any history of being used.

Is this sound advice that I have been given

Lyn

 

[DNQuest.com]

Let me put up a real life scenario.

I have a xxxxx.com.au domain name that I am trademarking. The xxxxx.com version of my domain name is held be a domain broker. He knows my intention to purchase the .com version and is asking a 5 figure amount amount. I was advised to wait until my TM is finally approved and put him on notice that the domain name can't be used in any way shape or form that closely relates to my TM. As this name is very industry specific, it should make the name worthless to sell. The domain isn't currently used and doesn't have any history of being used.

Is this sound advice that I have been given

Lyn

Actually, no. At least from what I read. Let me see if I get this straight, please correct me if needed:

You register xxx.com.au
You TM the domain xxx.com.au
After you get a TM, the you go after the xxx.com which was registered before you registered and TM xxx.com.au

If this is correct, it is called reverse-hijacking and not legal. First, you don;t file for TM, you earn TM status and filed for a registered mark (which needds to prove the TM status have been acomplished). If you TM the domain, you only have protection for the domain as a whole and can't take the name portion of the domain and assert TM rights. If the xxx.om was registered before any action by you, then there isn't anything you can do unless you can prove "bad faith" which in a case like this would be hard to prove. I am assuming the domain is parked with ads related to the domain name, so you can't claim he is stealing your traffic since he had been doing it before you exsisted. He is offering it for sale now, so he isn't coming after you for a sale becuase you did not exsist when he registered it. I am sure they will ahve documents showing you tried to buy the domain and since you didn't buy at thier price, they will show just cause for the reverse hijacking attempt.

Hope this clears it up for you. If there is something that I misunderstood or any clarifications you need to make, the nI will adjust according to those.

 

[slipondajimmy]

WOW DNQuest.com seems to be the only one in here who has a clue in here.

I think it would all come down to a case by case basis. There are so many variables involved its not even funny. If you are concerned about this and there is currently no trademark, service mark, or copyright that has to do with the domain you would like to purchase why don't you just go thru the process and do it?

Save your self the aggravation.

 

[Dave_Z]

I think it would all come down to a case by case basis. There are so many variables involved its not even funny.

But of course it's case to case. There's no requirement that decisions have to
be consistent with one another, especially depending on the facts presented
in each dispute.

Lyn, if you're saying what you're currently doing is going to give you an edge
to possibly wrest control of the .com domain name from its registrant, then do
at least consider what DNQuest told you. If you push through with the dispute
and eventually lose (and that's a very big if), it's like the phantom's skull that
never comes off.

And that mark can possibly damage your prospects of pulling off a similar case
in the future, especially if the opposing party brings it up. But don't take our
word for it, you can always check with a licensed experienced attorney who
specializes in these things.

 

[DropLister]

They cant claim you registered in bad faith, but I think if after they TM it or w/e and you start altering your site to be confusingly similar to their site or service then you might have an issue.

 

[Lyn]

Hi,

Thanks for the excellent imput. I registered the x.com.au domain and had the website created for Australia, but the website site has taken off like a rocket internationally. As a result, I thought I should try and secure the x.com version through a third party. My website has been published for 18 months.

The x.com.au site is without doubt the best in its genre on the web and no doubt the owner of the x.com has more than likely seen the site, hence the exhorbitant price. I can live without the .com, but the Trademark would certainly prevent (I believe) a competing site from stealing traffic. The x.com domain hasn't been parked for over a year, but since my last offer via a third party was made, I have noticed it has been parked using the standard search engine website.

My other option is to puchase another name and rebrand the website, but I see a lot of disadvantages in this, in regards to my excellent positioning in the search engines.

At this stage I can get comparable names in the $1500 to $3500US price range.

Any further advice on this would be appreciated.

Lyn

 

[DNQuest.com]

When was the x.com registered?

Business 101, supply and demand will dictate the price and any fluctuation associated with the product. Welcome to the end-user portion of the domain game.

 

[DropLister]

x.com is owned by paypal haha, dont waster your time trying to buy.

 

[DNQuest.com]

x.com is owned by paypal haha, dont waster your time trying to buy.

Have you bothered to even read the thread before you posted? or was this just a joke you were trying to make?