What if I reg a name that does not exist yet? Am I stuffed in this scenario?

[binaryman]

I know..the heading sounds confusing but what I mean is this: Say I register a domain that no-one else has even thought off. In other words it does not yet excist and there are obviously for that reason no trademark rights on it. Lets call this domain EntertainmentKitchen.com Ok so I reg it and I sit on it until such time as I have enough money and plans to develop it into a entertainment site.
A couple of years go by and I do nothing with the site yet except pay my yearly registration fees and then some big entertainment company comes up with the idea of a great new entertainment site and guess what they decide on the name entertainmentkitchen and they go and file a trademark on it and the trademark is approved as there is nobody to contest it. Then all of a sudden I get a Cease and Desist letter from them telling me to hand over my domain Entertainmentkitchen.com
So..am I stuffed or what? Do I have any rights or do I have to hand over? Will I loose if it comes to a Wipo court room scene?

 

[xXDanteXx]

If they go the wipo route, they will need to prove that you registered the domain in bad faith. But, that wont be easy for them since the creation date of the domain is prior to them filing a trademark.

So you would be pretty much safe.

PS. Its better to get a second opinion from someone with more knowledge over here

 

[evertonian7uk]

develop in to something, anything, best to show some usage than none at all, you stand a much better chance this way, even if you post a blog, or just some updates on the page, anything, just to show usage you should be ok.

 

[binaryman]

Well I had a look at the Trademark forums and came across these snippets of information there by trademark lawyers.

Quote" Website domain usage alone is usually not sufficient to establish trademark rights in the name. Without trademark rights, you likely have very little if anything to enforce against the late-comer."Unquote.

Quote" A domain in an of itself is not a trademark and its use does not establish use of a trademark in commerce."Unquote

Great so if push comes to shove I loose my domain name and all the money I spent on registration over the years.

http://www.intelproplaw.com/ip_forum...d1ec&board=2.0

http://www.intelproplaw.com/Forum/Fo...index;start=25

Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations



Owning a trademark, be it common law rights or a trademark registration, does not necessarily entitle a business or individual to the corresponding domain name. A domain name registration of another's trademark or incorporating that trademark into a domain name does not always mean a trademark holder can successfully sue a domain name registrant for cybersquatting. Domain name registration is still on a first come, first served basis. A domain name registration that is first in time confers rights upon that domain name registrant if you are not a cybersquatter whereby a trademark holder can establish rights that predate the domain name registration.
Trademark holders must beware. Just because you own a trademark does not mean you can wave a big trademark stick and successfully acquire the domain via the UDRP or an ACPA lawsuit. While first in time, first in right can benefit you if your trademark rights predate the domain registration, it can be an absolute bar to recovery if the domain name registration predated your trademark rights. Having a trademark registration with the USPTO does not give you the silver bullet to go after any domain name incorporating your trademark. The UDRP may not be an option as expressed by numerous panel decisions:

Without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held. See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration . . . of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).

Your trademark rights must predate the domain name registration. An analysis of the relevant dates are critical, including when you acquired trademark rights (common law or through registration) and when the domain name registrant registered the domain. An experienced cybersquatting attorney can advise you regarding your rights. Even if it appears that the domain name existed prior to you establishing trademark rights, a cybersquatting attorney familiar with the UDRP can determine if you still have the ability to show predated rights. Do not end up subjecting yourself to a claim of reverse domain hijacking for failing to consult with a cybersquatting attorney. What you perceive to be a cybersquatter may in fact be the rightful owner of the domain and you may have to compensate the domain name registrant in order to get the domain name corresponding to your trademark.
http://tcattorney.typepad.com/ip/200...adem.html#more



Interesting case:
http://www.intelproplaw.com/ip_forum...hp?topic=202.0

This one too:
http://www.intelproplaw.com/ip_forum...p?topic=3134.0

And Googled " Domain registered before trademark"
http://www.google.com/search?hl=en&q...=Google+Search

 

[R9V.com]

You can make the argument that they registered the trademark in bad faith as means to aquire the already registered domain which they obviously had their sights on. This on their part this is a nasty and underhanded tactic to aquire a domain - in addition to cheap; as they could most likely make an offer to you than is less than the legal expenses to aquire the domain by this method.

 

[evertonian7uk]

best talk to Jberry about this one, cause imo although most of that is accurate, some may not be,

if the domain doesnt exsist yet, and you develope it into your own brand, you have a very good case, there are others who can help you more, but if it were me i would develop now and fight it later.

 

[IAmAllanShore]

WIPO's view for UDRP:

http://www.wipo.int/amc/en/domains/search/overview/index.html#14
1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527, Transfer
Iogen Corporation v. Iogen D2003-0544, Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer


http://www.wipo.int/amc/en/domains/search/overview/index.html#31

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

 

[Dave_Z]

Beat me to it, Allan.

You're not necessarily stuffed, binaryman. As always, it depends on whatever
facts exist during that time.

But the sooner you put up something to show some use, arguably the better.
Arguably, anyway.