Trademarks, TM classes, and domain names

[markfromslo]

Here's an issue that I don't understand about trademarks:

When one is given a trademark, it is given in a particular class (or classes). Other's can then get a trademark with the same name in another class as long as it is not likely to cause confusion. For example, company A can get a TM for XYZ in the class of software and Company B can get a trademark for XYZ in the class of boating. No problems.

So, this leads me to the question that relates to domain names. Let's say there is a trademark XYZ in the class of music recordings and the owner of that trademark does not own the domain. I pick it up at a drop auction. Why is it that I cannot use the argument that I will be using that domain name for the purpose of something entirely different than music recordings?

 

[DNQuest.com]

Usage goes a long way, but establishing your rights can be difficult. A company has every right to protect thier mark regardles of your plans. The best example is Apple (Records and Corp). Even they had some problems with TMs. So in your case, you pick up a name and say, "I'm going to do this with it", but that does not atomatically give you rights. You need to earn i. It also depends on the nameand its generic (or lack of) nature of the name.

 

[Dave_Z]

Why is it that I cannot use the argument that I will be using that domain name for the purpose of something entirely different than music recordings?

You can, actually. The sooner you "establish" (for lack of a better term) your
eventual use of it, the better.

However, DNQuest gave a few clues as to what can also determine whether
you'll be able to use the name as you desire or not, especially if you're dealing
with a well-moneyed party.

BTW, the Easy Group was reminded by WIPO (I think, I forgot who) they don't
have exclusivity over the word "easy".