What if someone registers a trademark after I own a domain name?

DigitalDeepak.com · Mar 22, 2015

I know that we cannot register trademarked names. But what if someone registers a trademark for one of the unique names I own? Will I lose that name?

bazabizo · Mar 22, 2015

Then you are safe a 100%, thats the first factor that is considered for cyber squatting. I am a 100% sure of this piece of information. Its a fair industry

Cal2 · Mar 22, 2015

bazabizo said:
Then you are safe a 100%, thats the first factor that is considered for cyber squatting. I am a 100% sure of this piece of information. Its a fair industry

That's interesting. I thought there was maybe some situations where things didn't quite go that way.

Name Trader · Mar 22, 2015

Once you become aware of the TM then you cannot infringe on the TM owners rights. Since you know there is a TM, then you can't claim that you were unaware of the TM. Personally I'd say you need an intellectual property lawyer to defend you in any UDRP, if you have been infinging on the TM owners rights. But if your website has nothing to do with the TM, then you would be in the clear.

Usually it's when you have a single panelist, that you can get quirky decisions.

Dave_Z · Mar 23, 2015

bazabizo said:
Then you are safe a 100%, thats the first factor that is considered for cyber squatting. I am a 100% sure of this piece of information. Its a fair industry

If only that's 100% accurate:

http://www.wipo.int/amc/en/domains/search/overview2.0/#14

1.4 Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the 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 under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP [see in this regard paragraph 3.1 below].

I've seen few administrative decisions wherein the domain name was nonetheless given to the trademark holder who acquired such rights after. In most (if not all) of those decisions, however, that result occurred because the domain holder did something after — as Stu mentioned — becoming aware of the trademark's existence.

DomainVP · Mar 23, 2015

I check my portfolio against TMs every 3 - 6 months.

If there exists a TM on a name that matches your domain, then you have to play it safe and at least have information about the other party or website 'above the fold' if your domain is not developed.

The other option is to develop your domain property so that it specifically reflects that you are not using the name for the same purposes as detailed by the other party. Depending on the name, you may have the same interests as the other party, in that case just develop the site and include an above the fold disclaimer that lets visitors know the difference between your service and theirs.

Don't rely solely on registration date, because there have been instances where panels look at the renewal date and base their findings on 'fair use' and 'bad faith' on renewal dates.

You also have the option to dispute their trademark with the USPTO, but you will have to show use prior to their trademark; domain registration alone does not qualify as use.

Why do any of this? Well...

In a UDRP proceeding the panelists will look for TM similarity/match, if you have fair use rights to the domain, and if you are owning it strictly for resale or to profit on their name (bad faith).

If you can show that you registered the name before the TM owner asserted TM rights, as well as showing that you have active development of the domain, and that you recognize that there is a TM and you want to avoid confusion and do not want to sell the property; you have an ironclad defense for a UDRP, and have your assets protected.

Worst case, they file a UDRP against you; request that a panel of 3 evaluate the case, and request that RDNH (reverse domain name hijacking) be found against the complainant on the grounds that any reasonable entity that took the steps to file a UDRP would be aware that your domain would not qualify for UDRP relief.

Once you show that your registration precedes their TM along side your fair use and good faith registration, a panel is likely to find in your favor; ball is in your court.

Good luck.

Name Trader · Mar 23, 2015

OK.Let's give an example. Let's say you own TheDomain.com. You've owned it since new for over 5 years. You are monetizing it with Parking Revenue. After 5 years somebody registers a TM for "The Domain". The trademark encompasses registrations, auctions, and the buying and selling of domains. For sure your Parking Page is going to have a load of infringing ads on it. The normal process for a UDRP is for the TM holder to send a cease and desist letter from their lawyer. After you have received that C&D letter, if you continue to park your domain or if you remove it from parking and use some other method to monetize your domain which is also infringing on their TM, the UDRP decision can be a toss-up.

You have not registered it in bad faith, but anyhow you are continuing to use it in bad faith. The way the UDRP rules are written, you need to have registered in bad faith and you need to continue to use it in bad faith. But, there have been a number of single panelist panels which have awarded the domain to the complainant because it is continuing to be used in bad faith only. It really is a dangerous strategy to have a single panelist who you know makes quirky decisions.

Which is why I recommend you need an IP lawyer, if you have been infringing on their trademark. To argue your best case position.

However, if you are using TheDomain.com for selling real estate, you have nothing to fear from the TM owner.

GBA · Mar 23, 2015

DomainVP said:
I check my portfolio against TMs every 3 - 6 months.

If there exists a TM on a name that matches your domain, then you have to play it safe and at least have information about the other party or website 'above the fold' if your domain is not developed.

The other option is to develop your domain property so that it specifically reflects that you are not using the name for the same purposes as detailed by the other party. Depending on the name, you may have the same interests as the other party, in that case just develop the site and include an above the fold disclaimer that lets visitors know the difference between your service and theirs.

Don't rely solely on registration date, because there have been instances where panels look at the renewal date and base their findings on 'fair use' and 'bad faith' on renewal dates.

You also have the option to dispute their trademark with the USPTO, but you will have to show use prior to their trademark; domain registration alone does not qualify as use.

Why do any of this? Well...

In a UDRP proceeding the panelists will look for TM similarity/match, if you have fair use rights to the domain, and if you are owning it strictly for resale or to profit on their name (bad faith).

If you can show that you registered the name before the TM owner asserted TM rights, as well as showing that you have active development of the domain, and that you recognize that there is a TM and you want to avoid confusion and do not want to sell the property; you have an ironclad defense for a UDRP, and have your assets protected.

Worst case, they file a UDRP against you; request that a panel of 3 evaluate the case, and request that RDNH (reverse domain name hijacking) be found against the complainant on the grounds that any reasonable entity that took the steps to file a UDRP would be aware that your domain would not qualify for UDRP relief.

Once you show that your registration precedes their TM along side your fair use and good faith registration, a panel is likely to find in your favor; ball is in your court.

Good luck.

This means in fact, despite your super good domain name, it's value is so much dependable on a second-party TM registration, which may happen at anytime, am I right? It won't kill it, but will harm, especially when the name is well-targeted and has specific applications.

DomainVP · Mar 23, 2015

Grossu said:
This means in fact, despite your super good domain name, it's value is so much dependable on a second-party TM registration, which may happen at anytime, am I right? It won't kill it, but will harm, especially when the name is well-targeted and has specific applications.

Actually, it's the opposite. Just because there is a TM that emerges on a name, does not mean that your domain is now worthless to anyone else.

If the TM holder is marketing their name, which is actually your name, then the overall awareness and desirability to have your name increases; making your domain more desirable.

If a 3rd party is interested in your name they can buy it from you, and when they do your "good will" transfers along to them. This is not the case in instances of drops and auctions. If a 3rd party buys a domain directly from you then they take on the same good faith & fair use that you have had.

Sometimes there are multiple TMs for same or similar names, the most important factor of a name is what trade the name is being used in.

I own a developed domain name that has TWO exact match TM's on it for different services. I just make it very clear that registration and renewals here will not represent affiliation in any commerce that matches those TM's; and that the property is not for sale.

Bottom line, if you own a name that can potentially be TM'ed then throw some development on it and use it. Also, watch for filed TM's, as you can effectively dispute them anonymously, and block their TM filing.

Marlen · Mar 24, 2015

Thanks for this thread. I have a .com, which I picked up last year. Someone has just applied for a trademark on the name, which I came across by chance, and has put up a, very basic site, using another extension. I have the domain parked and listed for sale. I wasn't sure if I should be doing anything to protect the name, or whether I even could.

Name Trader · Mar 24, 2015

@Marlen - Does your ads infringe on their TM. If it does, you should take it off parking.

Marlen · Mar 25, 2015

stub said:
@Marlen - Does your ads infringe on their TM. If it does, you should take it off parking.

It doesn't at the moment, no, but there could be some future crossover, possibly, so I have taken it off parking, thanks. Their TM hasn't been granted yet, just an application, but I wouldn't want to risk anything I shouldn't. Thank you.

Name Trader · Mar 25, 2015

@Marlen - If your domain isn't making any money with parking, no problem. But if it is making money and not infringing on the trademark. I'd keep parking it, imho.

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