Having a domain, before the trademark?

[sasquatch]

For all our fine legal minds here, I would like to ask a question regarding the procedures of reg'ing the available domain first... then later finding out that someone had registered a TM or SM under that same name, AFTER the date I had registered my domain... and then being sued by them?

That is akin to me liking a certain registered domain, finding out that the word or the expression has not been trademarked, then setting up a pretentious and fictious business under that name, registering a trademark, and then suing the domain owner for the name he registered before I ever set up my "business" and/or established that trademark?

Gratias.

[jberryhill]

It's not as simple as when they did or did not register the mark. For example, if they had sufficient common law rights, and there is a reason to believe you were aware of them, such as by geographical proximity, then there may still be an inference of sufficient knowledge on your part.

I'm probably going to have to sit down and write my definitive rant on the use of the word "trademarked" in the sense it is generally used in this forum, because re-typing it is going to wear my fingers down.

Obviously the scenario set forth in your second paragraph would not be legally effective, and there are many decisions to back that up. But there are a world of factual scenarios in the gap between what you said in your first paragraph, and what you said in your second paragraph. This gap comes from the common myth that trademark registration is the alpha and omega of rights available in a trademark.

Whether someone has an enforcible trademark right is a question that is independent of whether they have registered their trademark with the USPTO.

It is almost certainly true that if their trademark rights do not predate your domain registration, then they would fail.

But, consider this scenario:

1. You register a domain name <name>.<tld>. You use the domain name to sell shoes.

2. Sometime later, a company launches a new dog food called <name>.

3. Again later, that company registers a trademark in <name> for dog food.

4. Again later, you decide that you aren't making much money selling shoes at <name>.<tld>. You notice that their <name> dog food has become wildly popular, so you decide to start selling dog food instead.

Now, tell me your gut feeling about how those facts should play out.

[Ovicide]

Now, tell me your gut feeling about how those facts should play out.

I'm a little confused: In this situtation, the name is being used in bad faith, but was registered in good faith (before the trademark holder was in business).

The Dispute Resolution Policy requires the name to be registered and used in bad faith. However the explanation of this requirement at:
http://www.icann.org/udrp/udrp-policy-24oct99.htm#4aiii
says:

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Which suggests that bad-faith use alone is enough to satisfy bad-faith registration and use.

So, does good-faith registration followed by bad-faith use == bad-faith registration and bad-faith use?

[jberryhill]

"The Dispute Resolution Policy requires the name to be registered and used in bad faith. "

You are correct.

And if the only tool you have is a hammer, you tend to treat every problem as if it were a nail.

However, the last few words in the question originally asked were "and then being sued by them?" which suggests this is not a UDRP question. The UDRP is not an all-purpose solution to any legal issue that might arise in connection with a domain name.

That is, of course, if one applies the UDRP as if general legal rules were meant to be used as if they were mathematical theorems. Oliver Wendell Holmes said, "The life of the law has not been logic: it has been experience." If you follow legal rules as a formal logic system, you inevitably end up with irreconcilable contradictions and paradoxes. That is because law is built as a system of regulating human behavior - and humans behave in infinitely complex and irrational ways. So, you throw a few rules out there as guideposts, and you allow wiggle room for some reasoning in the interpretation of those rules. Reasonable minds, of course, can differ; particularly in unfamiliar situations where there are no clear precedents.

That said. What I described would be a straightforward trademark infringement matter.

[Ovicide]

"That said. What I described would be a straightforward trademark infringement matter.

Thanks, John. I'm learning the rules, and trying to stay well on the correct side of them.

I try to read everything you post.

[Garry Anderson]

John> "The UDRP is not an all-purpose solution to any legal issue that might arise in connection with a domain name."

John is right - essentially UDRP is an all-purpose solution for corrupt interests that in fact transcends current Trademark Law.

UDRP was formulated on the basis of UN WIPO recommendations with specific intent - to aid and abet trademark overreach.

UN WIPO are biased towards trademark owners (their customers) - both in principle and with cash.

WIPO make it easy for them to take the domain from lawful owner - even though the owner may be doing nothing illegal.