discuss Trademark vs. Domain Name, Part II

[Lewstar]

Thanks to the most-helpful members who responded not only most educationally, interestingly and quickly to my message. I’m amazed at how helpful the great majority of NamePro pros are.

And l believe the last respondent helped me focus on the real concern l have, which is the following:
What if l—or anyone else—registers a domain name, and someone comes along and somehow comes across the domain name and believes it would be a good name for a product or service or whatever—and trademarks it.

Even though the domain name was official before the trademark, would the trademarker have the legal right to tell me or anyone else to no longer use the domain name—as his or her trademark takes precedence?

Thanking you in advance.

Lew

 

[Visioner Studio]

From the domain name dispute cases we can see so far, how the dispute resolution panelists determine whether a domain name can continue to be used by its current owner is by checking its registration date or "change hands" date or how it is used.

There are two situations in which the panelists will ask that the domain name be transferred to the trademark owner:

• The domain name's registration date or "change hands" date postdates the trademark.
• The domain name is used to serve advertisements which link to the trademark owner's competitors.

As long as your domain name is not involved in those two situations, you are safe to continue to use it.

Hope that helps,
Ian

 

[Kai W.]

From the domain name dispute cases we can see so far, how the dispute resolution panelists determine whether a domain name can continue to be used by its current owner is by checking its registration date or "change hands" date or how it is used.

There are two situations in which the panelists will ask that the domain name be transferred to the trademark owner:

• The domain name's registration date or "change hands" date postdates the trademark.
• The domain name is used to serve advertisements which link to the trademark owner's competitors.

As long as your domain name is not involved in those two situations, you are safe to continue to use it.

Hope that helps,
Ian

It also needs to be added that parking may have an impact on the domain owner.

 

[Visioner Studio]

It also needs to be added that parking may have an impact on the domain owner.

You're right. Parking pages usually contain PPC advertisements, whose link destinations cannot be controlled by the domain name owner. So using such parking pages is risky on this matter.

 

[Domains - Wanted]

...Even though the domain name was official before the trademark, would the trademarker have the legal right to tell me or anyone else to no longer use the domain name—as his or her trademark takes precedence?

Depends on what you are "using" the domain for. Trademarks are not absolute. They are limited to specific classes and locales. So unless you are targeting the TM holder in bad faith, the answer to your question is: probably not!

Which is not to say that such TM holders will not try to pressure you to release the "matching" domain names. Some of them do this unknowingly, in good faith, but most are attempts to trick domainers to release the name in question even if there is no TM infringement whatsoever. Most domainers have little if any understanding of relevant legal issues, work without any legal support and scare easily.