Say I want to open a business, lets say DebacleX Inc. and I trademark and copyright the name. Then I got to get the domain of debaclexinc.com and its taken. Say it was made 2 years before I had the name copyrighted. Am I entitled to the domain? Or is it settled on a time thing?
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TM/(C) Question
- Thread starter DebX420
- Start date
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Thats called reverse hijacking... if you plan to trademark a domain and then go after it...then my dear friend.. you are the kind of individuals we as Domainers don't LIKE! and believe me... YOU WILL NOT WIN IN COURT
I don't like your method!
I don't like your method!
DebacleX said:
I'm going to agree and disagree with the others here, and I'll state why.
Generally, domain names registered before their trademark-namesakes existed
can be protected against infringement claims. However, there are few limited
circumstances where a trademark holder can have a valid claim.
Take this scenario.
DebacleX registered wxyzdotcom and put PPC ads. I sell wxyz bowling balls.
A year later, I file an application at USPTO for wxyz bowling balls. After some
time, it gets approved.
I continue selling wxyz bowling balls, and DebacleX's wxyz domain will continue
to show PPC ads. We go our merry ways.
Then...
...six months later, DebacleX's wxyz PPC ads show those for...bowling balls. I
catch wind of it, believe he's intending that to profit from my mark, document
the whole thing, and file an infringement claim against DebacleX.
That's kinda what happened in the MySpace.co.uk dispute. MySpace won, but
it was eventually overturned...with some slight reservations.
However, don't let that dispute lead you to believe it'll turn out that way with
a similar one. These things are treated case and case, and they're not forced
to be consistent with one another.
With that said, I've met and encountered people who believe they're entitled
to something for whatever reason. Others can argue they're not, but that will
not always stop them from believing whatever they want to believe.
So to answer your question, Debacle, you can believe you're entitled towards
the domain name, while others obviously disagree. But unless you can prove
the "usual things" needed to show infringement and what not, then you won't
necessarily be able to get that domain name despite having a mark.
I can point out a few other exceptions, but I think you get the idea.
Generally, domain names registered before their trademark-namesakes existed
can be protected against infringement claims. However, there are few limited
circumstances where a trademark holder can have a valid claim.
Take this scenario.
DebacleX registered wxyzdotcom and put PPC ads. I sell wxyz bowling balls.
A year later, I file an application at USPTO for wxyz bowling balls. After some
time, it gets approved.
I continue selling wxyz bowling balls, and DebacleX's wxyz domain will continue
to show PPC ads. We go our merry ways.
Then...
...six months later, DebacleX's wxyz PPC ads show those for...bowling balls. I
catch wind of it, believe he's intending that to profit from my mark, document
the whole thing, and file an infringement claim against DebacleX.
That's kinda what happened in the MySpace.co.uk dispute. MySpace won, but
it was eventually overturned...with some slight reservations.
However, don't let that dispute lead you to believe it'll turn out that way with
a similar one. These things are treated case and case, and they're not forced
to be consistent with one another.
With that said, I've met and encountered people who believe they're entitled
to something for whatever reason. Others can argue they're not, but that will
not always stop them from believing whatever they want to believe.
So to answer your question, Debacle, you can believe you're entitled towards
the domain name, while others obviously disagree. But unless you can prove
the "usual things" needed to show infringement and what not, then you won't
necessarily be able to get that domain name despite having a mark.
I can point out a few other exceptions, but I think you get the idea.
- Impact
- 21
Generally no... he has prior rights especially if he has used it for the same purpose as your planned use... in which case he can invalidate your tm if he so desires and has the time and money.
Especially if his use is different, then you have no more right to it than he does.
Especially if his use is different, then you have no more right to it than he does.
I wasn't planning on it :P I was just saying, cause my brother had an idea to open a company, and after he got the name and stuff picked, he found out that the .com to it was taken, and asked me if he could get it. I didn't know exactly what to say, so I asked :D
It's fine. Sometimes you'll get burned anyway when you ask, but at least you
got the answer you sought.
This reminds me of someone who asked a similar thing in DNF. After what was
all said and done, he wished the registrant would slip up so he could grab that
domain name.
Whatever happens, just try not to give them any opportunity to seize it.
got the answer you sought.
This reminds me of someone who asked a similar thing in DNF. After what was
all said and done, he wished the registrant would slip up so he could grab that
domain name.
Whatever happens, just try not to give them any opportunity to seize it.
- Impact
- 3,701
You wont win a domain if you apply for the TM two years after the domain was regged!
Honestly if you were to apply for a TM you would check this out before!
Anyone starting a business would check all these things before considering a name for the business!
If your business was operating before the TM applied for and domain reg then I am unsure what would happen but to try and get something that isnt yours thats THEFT!
Honestly if you were to apply for a TM you would check this out before!
Anyone starting a business would check all these things before considering a name for the business!
If your business was operating before the TM applied for and domain reg then I am unsure what would happen but to try and get something that isnt yours thats THEFT!
- Impact
- 21
Tell him he will lose his $5k minimum to UDRP him if he tries, and it would possibly be cheaper to buy it from him, and really thats his only option.
If he doesn't like the price, he should pick a new name and check for availability in .com FIRST, so he can reg it, then get the tm et al.
If he doesn't like the price, he should pick a new name and check for availability in .com FIRST, so he can reg it, then get the tm et al.
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