question Trade Marks

[Mohamed Ahmaid]

Hi all
Let's say there is a company named X
and I bought a domain named X
but the age of the domain is older then the company itself
The question is :
Who is got the rights?

 

[Silentptnr]

You have the rights unless you have lost a UDRP. You should clarify whether the domain has been continuously registered or if you mean that the domain was first registered, but then was dropped and re-registered.

 

[Dynadot]

The domains age would help you, but that isn't really the only thing they look at, so you could still lose the domain name in a UDRP.

Regards,
Samuel L Dotson

 

[Silentptnr]

The domains age would help you, but that isn't really the only thing they look at, so you could still lose the domain name in a UDRP.

Regards,
Samuel L Dotson

If, and only if, a udrp is filed which costs about $1500, they would have to prove all three elements in order for you to lose the domain. Research your position on ALL 3 required elements.

 

[Dominique]

Hi all
Let's say there is a company named X
and I bought a domain named X
but the age of the domain is older then the company itself
The question is :
Who is got the rights?

If you bought the domain after the trademark was registered (or after the unregistered trademark rights were acquired) panels typically would treat this as a new registration.

So, the age of the domain is usually not relevant in cases like yours.

 

[Sinh]

For example, The domain was registered in 2000 and the trademark was registered in 2001. Now we bought the domain from an auction like Godaddy, Namejet....So, who is got the rights? I have seen a lot of domains like this on the market.

 

[Kate]

For UDRP purposes a change of ownership may be treated like a new registration.
But it depends on many things, especially how the domain name is going to be used.

 

[jberryhill]

Let's say there is a company named X

That's great.

Do they use X as a trade or service mark, or merely as a company name?

I figured I'd ask, since the whooshing sound you hear is everyone else flying right past that issue.

 

[jberryhill]

That said, if your question is:

1. Company X has a TRADE OR SERVICE MARK, registered or UNREGISTERED, for which they can prove a date of, say, 2010.

2. There is a domain name which was originally registered in 2000 which is identical or confusingly similar to the trade or service mark.

3. I bought the domain name last week in a transaction which did not involve an assignment of goodwill in an ongoing business being conducted via the domain name, and/or I do not plan to use the domain name for purposes consistent with that of the senior user of the domain name from whom I acquired such an assignment.

Q: Do I have priority of rights in my domain name relative to their trade or service mark?

Then the answer is, no, you don't.

On the question of priority, the relevant inquiry under the UDRP is when YOU acquired the domain name, absent other circumstances suggested by point 3 above.

http://www.wipo.int/amc/en/domains/search/overview3.0/#item38

3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?

3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)

Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

 

[Dominique]

For example, The domain was registered in 2000 and the trademark was registered in 2001. Now we bought the domain from an auction like Godaddy, Namejet....So, who is got the rights? I have seen a lot of domains like this on the market.

Despite the fact we are not talking about any concrete case/dispute, I will try to explain you what I think it concerns you.

For a UDRP complaint to succeed, the complainant must establish that the following three cumulative criteria are met:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
(ii) The registrant of the domain name has no rights or legitimate interests in respect of the domain name
(iii) The domain name has been registered and is being used in bad faith

Lets say complainant can prove that domain name is identical or confusingly similar to his trademark + he can prove the registrant has no rights or legitimate interests in respect of the domain name.
At this point, complainant have to prove also that domain has been registered and is being used in bad faith.
I suppose you know that it would be very hard for a complainant to prove a respondents bad faith if a domain name has been registered before a complainant has acquired trademark rights.
But what does it mean "registered"? First registered, creation date? What about the change of ownership?
According to this, Wipo 3.0. states:
"Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name."
The reason behind this is that its necessary to determine a good/bad faith registration.
Because the initial registrants "good or bad faith" is not relevant anymore, we need to determine a respondents (a new owner) "good or bad faith".
The conclusion is that a change of ownership / transfer of a domain name to a third party, in general, is considered as a new registration.
If you have bought the domain from an auction, the relevant date to determine a good/bad faith is the date of your purchase.

But remember, complainant have to prove that domain name has been registered + is being used in bad faith, and here we are talking only about the relevant date for determining your bad/good faith registration.
Its only a part of the process of proving.

"What if the respondents registration was made in good faith but the renewal was not?", "What about trademark, is it widely known?" and many questions like this can pop out from what is seemingly nowhere, but its important to stay focused on the main theme because we are talking in general here.

Im giving you this example just to show you how complicate this subject could get.
If you want to discuss something specific, just let us know and give us more informations.

 

[jberryhill]

"What if the respondents registration was made in good faith but the renewal was not?"

That one is pretty much a dead issue these days, but lives on in zombie UDRP arguments made by Complainants who haven't been paying attention.