Trademark issues

[tryin]

I registered a .com last year (march 2006) just found out the name was filed for trademark on December 2006. Also my .com is an abbrevation of their Trademark, if it makes a diff. HELP PLEASE.

 

[IAmAllanShore]

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

 

[Nashfan]

You're ok.

 

[IAmAllanShore]

You're ok.

Well I can't speak for everyone, but I'm convinced.

-Allan :bah:

 

[tryin]

I'll complicate this a little more. I sounds though I am OK, but I was planning on reselling it. It is a decent CASINO.COM. I assume I can't do that now, because buyer would be infringing?

By the way I also own the .net, .info, and .biz.

 

[DNQuest.com]

On the TM application, when do they state first use? Chances are that they have TM status before the filing date. Can you find out when the company started? You can't go by USPTO alone.

 

[tryin]

They opened for business in December 2006 also

 

[haynesey]

i think you will be ok, with this.