Trademarked name date vs Domain name reg date

[dkh]

Folks,

I am interested in buying the .com domains for a singular and plural phrase that are trademarked. Hear me out now, as I don’t think this would be cybersquatting (at least I’m pretty sure for one of the domains). Here’s the deal:

- The domains were registered in July 2006 and January 2007.
- Someone filed a TM for the singular phrase in August 2006. The trademark was granted to that applicant in February 2007.

Question 1: Does the fact that one of the domains was registered before the trademark application was even filed mean that the trademark holder could not sue for transfer of that domain to his/her ownership? (I'm thinking the recent iphones.com sale to Apple is one of many precedents. Iphones.com was registered before Apple filed a trademark and/or started selling iphones.)

Question 2: Because the other domain was registered before the trademark was approved for that term also mean that the trademark holder could not sue for transfer of that domain to his/her ownership? In effect, what is the operative date: the date of TM filing, or the date of TM approval?

Any thoughts and/or direction would be greatly appreciated.

Bob

 

[DNQuest.com]

The earlier of "date first use in commerce" or "filing date" would take precedence. If the domain is registered before the earlier of the two, then they cannot prove bad faith registration. But this does give a "do anything" with the domain. If you change the content after the TM and show "bad faith", that could hurt you.

Since you are looking to purchase the domains, the day it is transferred would be concidered a "new registration" and it does not matter when it was originally registered unless you purchase the "goodwill" associated with the domain (IE- you are buying the busniess or the product that the domain was being used for). So yes, it could be concidered cybersquatting. (yes, there are many variables to concider)

 

[dkh]

Philip,

Thanks for the info. I don't like the answer, but that's beside the point. Better safe than sorry. I'll have to tell the current owner it's a no-go (though he could sell one of the names to the TM holder without problems, if I'm following you correctly, because he regged that domain before the TM filing, though possibly not before first commercial use).

Bob

 

[Name Trader]

Yep. Philip is correct. You knew about the trademarks before you bought the domain. That's enough by itself, unless of course you plan to sell trees and the trademark covers technology..

 

[dkh]

You knew about the trademarks before you bought the domain.

Correction: I didn't buy the domains. I was considering it, and now I am not proceeding with that consideration.

Thanks.

 

[Domagon]

A trademark does NOT automatically give one rights to the idential looking domain name(s).

If you like the domains and have a use for them (even buying to resell may be ok depending on situation), then register the names - just keep an eye out for what the TM holder is doing and try to avoid trade in their line of business on the domains...

The date of TM verses domain registration can matter, but not always; no guarantees either way ... in many domain TM disputes the crux of the matter comes down to usage.

Ron

 

[DNQuest.com]

AS mentioined, jsut becuase it is a TM does not give exclusive rights to the TM holder. Usage plays a significant part in determining bad faith. IF your intent was treading in the TMs catagory, then it is best to bypass the domain. But if you actually use the domain in a comletely different area, thenthen a challenge to teh domain will be harder to prevail. Take windows, if by any chance windows.com ever dropped and a windows company had the good fortune to pick it up, microsoft would be up the creek without a paddle. Another thing, anybody can file can file anything against anyone. If they are able to prevail, that is a different story.

BTW- most people don't like my answers, truth be told. But they are not my answers, they are someone else's which I try to properly interpret