discuss What Happens When A Domainer Registered A Domain Name BEFORE Someone Else Registered The Trademark ?

[blue crystal]

Does the trademark owner still has the right to sue the domainer ?

 

[Martins B.]

Has the right the sue, but should lose the case.

 

[twiki]

While you should still ask your lawyer, here's something to think about:

• You cannot infringe something residing in the future. Your registration action occurred before they registered the trademark. So the domain stays with you.

• On the other hand, you have basically waived your potential rights to the name by not registering that TM.
  
  So if you have similar activity with the trademark, they can sue for that nowadays and this time there is a significant chance of them having success since you are infringing the trademark today, not in the past. Make sure your activity on the domain is completely different.

 

[Martins B.]

Also, shouldn't this type of dispute go to UDRP?

 

[cooljub]

How long has the trademark registrant been in business under the name? A trademark doesn't necessarily have to be registered to be established.

 

[blue crystal]

How long has the trademark registrant been in business under the name? A trademark doesn't necessarily have to be registered to be established.

For the sake of the discussion, let's say, one month ago and only after registering the trademark.

 

[jberryhill]

For the sake of the discussion, let's say, one month ago and only after registering the trademark.

I gather we’re not in the US then?

You cannot register a mark in the United States without using it first. You can file on an intent to use basis, but that application will not register until the mark is used in commerce.

@cooljub is bang-on in the comment above.

What matters, at least as far as priority is concerned, is when they acquired trademark rights, not when they registered the mark. The mark might have been around for years before they registered it.

The other confusing aspect of your question is “can they sue”? Well, yeah, anyone can sue. The answer to any question that ends with “can they sue?” Is yes.

 

[blue crystal]

The other confusing aspect of your question is “can they sue”? Well, yeah, anyone can sue. The answer to any question that ends with “can they sue?” Is yes

Yes, I should have rephrased my question. And yes, I do not live in the USA. I live in Brazil. Perhaps, my question should be:
What are the chances of the trademark owner winning a process against the domain owner who possesses this name since way before it was trademarked ?

 

[jberryhill]

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-1799

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0606

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0335

 

[Ategy]

Also remember that the trademark or even mark usage "start date", is not necessarily the same date that you would be "safe" owning the domain.

A UDRP could be won against you if you registered a domain even shortly before the trademark began (whether registered or not). If the UDRP panellist finds reasonable grounds that you acquired the domain in anticipation of that upcoming trademark, then you will likely lose the 3rd part of the UDRP (bad faith).

It would likely depend on the uniqueness of the name and how big the potential mark was in public awareness.

As a very basic example .. if there was news stories of even rumours of Amazon starting an online bank 3 months before the official announcement or trademark registration .. then it would be probable the registration of AmazonBank,com or AmazonFinances.com, etc would be seen as bad faith registrations within those prior-to-registration/usage 3 months.

I highly suggest you read many of @jberryhill's posts here at NameCult .. truly amazing information for those who want to understand all the subtleties of trademarks and UDRPs. It's amazing how many domainers think UDRPs are a black/white judgement .. when in fact they are indeed many shades of grey!

 

[blue crystal]

So if you have similar activity with the trademark, they can sue for that nowadays and this time there is a significant chance of them having success since you are infringing the trademark today, not in the past. Make sure your activity on the domain is completely different.

Even if my activity using the domain also started way before someone registered a trademark ?

 

[twiki]

Even if my activity using the domain also started way before someone registered a trademark ?

Yes... you should have filed for that particular trademark if you wanted to use the name today in that niche. You can't infringe it in the past but by continuing, you are infringing in the present.

Edit: You can continue using the domain only if the subject of your website is totally unrelated to the brand's activities, although it has the similar name. You also cannot sell or transfer the website, because then the new owner has just registered a domain nowadays, and thus it is infringing on the trademark.

 

[twiki]

Oh, and once more = this is subject to legal advice, so you need to get a lawyer for final answers. I'm only telling you what you can expect, so it's merely informative but could be flawed, things might differ as to lawyer's final response. Take this with a large grain of salt.