TM & Not used in bad faith = OK?

[vitalir]

Hi All,

As I understand even if I own a domain name which is an exact match of some TM I can legally hold it as soon as I don't use it solely 'in bad faith' (to affect owner's repuation badly). I've recently come accross a case when a company could not get hold of a domain in court, even though it was its TM, can't give a link unfort., forgot where it was. Am I missing something?

 

[Rudy]

Welcome to NamePros, vitalir.

As long as you own the domain BEFORE the company has trademarked the name, is it OK for you to have the name. If the company has trademarked the name before you registered the domain, they have the legal right to the domain.

 

[vitalir]

Thanks for welcoming - this site is a very useful and informative place indeed!

If the company has trademarked the name before you registered the domain, they have the legal right to the domain.

sure 1000%?

how about dictionary words? or numbers? for instance numbers "888" or "1"?

vitaly

 

[fonzie_007]

Just FYI, bad faith includes trying to profit.

 

[primacomputer]

It's not always required that you use it in bad faith. You can loose a name simply because you register it in bad faith even if it's not being used.

 

[vitalir]

Ah, I see. So just the fact of registration of a TM domain name can already be considered as 'bad faith' in court, even if the domain is undeveloped at all. This means any TM name registration done after the TM been registered is useless, right?

Hm.. People, domainers in particular, register loads of names every day - nobody checks for TM clearance, all this is kind of strange...
vitaly

 

[fonzie_007]

If you are smart, you should be checking uspto.gov for TMs before you register.

 

[Dave_Z]

If you are smart, you should be checking uspto.gov for TMs before you register.

Better yet, check google.

Best of all, don't unless you're truly prepared. :D

 

[labrocca]

Welcome to NamePros, vitalir.

As long as you own the domain BEFORE the company has trademarked the name, is it OK for you to have the name. If the company has trademarked the name before you registered the domain, they have the legal right to the domain.

Not true. Bad-faith doesn't always have to do with date of registration. Bad-Faith is usage.

example:
http://www.sidley.com/cyberlaw/features/badfaith.asp

 

[primacomputer]

Ah, I see. So just the fact of registration of a TM domain name can already be considered as 'bad faith' in court, even if the domain is undeveloped at all. This means any TM name registration done after the TM been registered is useless, right?

Not categorically but often this is the case. It is pretty rare someone picks a name that contains a trademark purely by accident with no intention of profiting off the other persons name.

Hm.. People, domainers in particular, register loads of names every day - nobody checks for TM clearance, all this is kind of strange...
vitaly

Many people do check TMs before registering a name. In fact if you read through the TOS you agreed to for the last name you registered you probably agreed it was your responsibility to check for TM issues. Personally I rarely check for TMs because I generally have a legitimate interest in anything I register. But it's certainly true that a lot of people do not put the though into registrations that they should.

 

[vitalir]

thanks! very good explanations and links!
vitalir

 

[GreenGambler]

Wow thanks for the link fonzie, I've checked and all my DN's are in the clear...yeah!!! Thanks for the tip.

What if I let someone post to one of my URL's and he trademarks the name. Then after a year he decides not to use the site or name anymore. Is it easy for him to un=TM that name or would that cause complications if I decided to use the site w/o him releasing his TM.

 

[ttu_soko]

It doesnt matter if you have a bona fide (good faith) belief or a bad faith intent when you register a domain, if that TM was "first used in commerce" or first filed (by filing date) before you, the TM owner can pursue legal action if the domain name is likely to cause "consumer confusion".

Wow thanks for the link fonzie, I've checked and all my DN's are in the clear...yeah!!! Thanks for the tip.

What if I let someone post to one of my URL's and he trademarks the name. Then after a year he decides not to use the site or name anymore. Is it easy for him to un=TM that name or would that cause complications if I decided to use the site w/o him releasing his TM.

Not sure what your quesiton is. If someone posts your domain on their site and they trademark the domain?

 

[jmweb]

Better yet, check google.

Better yet, don't use Google. This is obviously not the purpose of Google. Use the proper methods of finding out if a name is trademarked or not.


John

 

[DNQuest.com]

Though not obviously the reason Google exsists, but if it can be easily shown that the TM is rampant across the net, chances are it is a TM. It is the registers obligation to not register TMed domains, it is stated in your registrars TOS. So if you use Google and see it is a TM, then chances are it is...