Trademark issue...

[Ber|Art]

Hi,

I have a question regarding trademark issues on a domain name.

One of my Dutch customers has an international Trademark (TM) on a name sins 2005. The .COM of this name has been registered in 2003 by someone who has parked the .COM domain. Does my customer have any rights to claim the .COM because of the new international TM on this/his name?

What would be the procedure to get the .COM?

Thx a lot,

 

[jberryhill]

Does my customer have any rights to claim the .COM because of the new international TM on this/his name?

On those facts alone, no. End of story.

 

[Ber|Art]

Thx for you quick response!
May I ask why you came to your conclusion? Is that because the domain owner registered the domain earlier?

Thx!

 

[jberryhill]

http://arbiter.wipo.int/domains/search/overview/index.html#31
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 <ode.com>, Denied
>Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827 <digitalvision.com>, Denied
PrintForBusiness B.V v. LBS Horticulture D2001-1182 <print4business.com>, Denied

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To make a long story short, in order to take something away from me, you are going to have to prove I did something wrong in acquiring it. If the domain name was registered in 2003, then was I supposed to be psychic and know that your client would obtain a trademark in 2005?

It would be a rather simple and stupid way to take domain names from anyone by merely obtaining a trademark at a later date.

 

[Ber|Art]

I hear what you say, Thx! a lot