TM question

[vietdomains]

I have 1 TM question,

I want to buy this "xyz.com" domain which was registered since 1996, but when i check the TM, I found that "XYZ" is trademarked on 2002. So, my question is, do i have the legal right to use xyz.com for whatever i want or will i eventually hand this domain over to the TM holder ? Please help!

 

[GFXNow]

I think since the domain was registered before the TM was then it's perfectly legal to do with the domain whatever you want and they can't do anything to you for it? Not 100% sure so someone correct me if I am wrong.

-Brent

 

[DNQuest.com]

Ok, I'll correct you....

Just using the facts given here. If the dates are correct, the domain holder can have success agaisnt the TM holder (provided the doamin holder doesn't do anthing stupid). Now, when the domain owner sells the domain, the transfer date will be used for the new owner, hence, it would be after the TM. Unless you bought the goodwill of the site and name (meaning, buying the actual site that may be doing business under that domain name, there are limitations to this), you outlook may not be good. It will be argued that you bought the domain with the intention of riding off the TM.

 

[IAmAllanShore]

WIPO has updated their page on this question:

1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 , Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527 , Transfer
Iogen Corporation v. Iogen D2003-0544 , Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer



3. Third UDRP Element

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

Relevant decisions:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074 , Denied
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 , Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182 , Denied

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

Relevant decisions:
ExecuJet Holdings Ltd. v. Air Alpha America, Inc. D2002-0669 , Denied
Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) D2003-0320 , Transfer
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer
General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online D2003-0845 , Transfer


-Allan :gl:

 

[vietdomains]

Thanks for all the informations guys. Very lucky for me that I haven't bought the domain yet. I still really the domain name, guess there is no way to get around the TM issue.

 

[Dave_Z]

I still really the domain name, guess there is no way to get around the TM issue.

There is, actually. But that'll depend on a gazillion things, especially what you
intend to do with it.

 

[AdoptableDomains]

I wouldn't have a problem buying or owning the domain. However, I would be extremely careful not to use it in any way similar to the TM holders claimed use, including being careful about any unknown PPC links from a parking page. It might be good to have a non-competing business plan before finalizing the transaction as a good faith target of potential development.

You weren't intending to use for the same purpose as the TM holder were you?