Question from a Newbie

[nycexposfan]

If I registered a .net and .biz name of a company that is in the process of registering a trademark on their name, can I be forced to transfer it to them? They have told me that they expect me to "transfer the names to them". I answered that I would be happy to but feel I should be compensated. I do not want any trouble or anything, but am also bothered that they can potentially "strong-arm" what essentially is free speech and free market.

Any advice is grealy appreciated.

[typist]

my only advice would be not to communicate any further with them until you feel comfortable with the advice you get...

[nycexposfan]

Can anyone recommend an attorney I can speak with about such an issue?

[Zaphrod]

The question will be wether you knew about them when you picked up the domains. If you did not, and registered them before they got a TM, you should be ok, but talking to a Lawyer would be a good idea. Just make sure to find one who knows something about Domains or you will be paying them to learn.

[DNQuest.com]

It isn't when teh TM registration was filed, it is when the TM was first used in commerce. If the name was used in commerce before the registration, then they have have rights to the domain, If you are using the doamin in bad faith (and I have a feeling you might be), then you have a uphill battle.

[Dave Zan]

Can anyone recommend an attorney I can speak with about such an issue?

We got 2 here: John Berryhill (jberryhill) and Brett Lewis (Brett_Lewis). But
don't expect to get legal advice for free.

[dotNetKing]

Did you register the domain to sell? To use on PPC? For your own business?

If for your own business, is the business for the same or similar type of product or service, or different?

If you registered the domain for your own business and the service or product is completely different, you shouldn't have much of a problem, as it was clearly registered in good faith, and for WIPO bad faith has to be proved.

[nycexposfan]

I registered it to resell. I did not realize there was a TM, or rather, one being registered.

[netfounder]

maybe you should tell me what is domain name

[G_Gekko]

Maybe not as these forums are spidered.

[Brett Lewis]

The answer depends on what the domain name and the trademarks are, as well as whether any use has been made of them in commerce, and your proposed use. The fact that you were not aware of this company when you registered the domain names is in your favor. If they were registered marks, you would be on constructive notice, i.e., the law would presume you to be aware of them even if you were not. Since these were only applications, that should not count against you. In the end, what you do should depend upon a full assessment of the facts and how much the names are worth to you.

Good luck.

Brett Lewis
brett@lewishand.com
www.lewishand.com

[DNQuest.com]

Via PMs, the OP admitted he done bad... He did the classic defination of the evil domainer (as we all did when we started out in this "business")... he lived and learned from this experience.

[DomainTrader]

The answer depends on what the domain name and the trademarks are, as well as whether any use has been made of them in commerce, and your proposed use. The fact that you were not aware of this company when you registered the domain names is in your favor. If they were registered marks, you would be on constructive notice, i.e., the law would presume you to be aware of them even if you were not. Since these were only applications, that should not count against you. In the end, what you do should depend upon a full assessment of the facts and how much the names are worth to you.

Good luck.

Brett Lewis
brett@lewishand.com
www.lewishand.com

I respectfully disagree with respect to the notion of the registrant being under constructive notice. There no charge or obligation on the part of the registrant to be "aware" of every trademark that has been registered. The charge they ARE under would be to insure that their use was limited in scope so that it would not infringe upon, dilute, or otherwise interfere with the rights of a tm holder.

If the mark is distinctive or famous perhaps the notion of constructive notice is applicable however in the absence of a tm acquiring such distinction it would be virtually impossible for one to know or to prove that one knew of the existance of the entity.

There are a plethora of urdp decisions in which the complainants had registered TM rights of which the respondant claimed no knowledge and in many of these instances the respondant has prevailed.

That relegates the notion of construcive notice to being but one factor amoung many which will be reviewed and considered in these instances.

[DNQuest.com]

There are a plethora of urdp decisions in which the complainants had registered TM rights of which the respondant claimed no knowledge and in many of these instances the respondant has prevailed.

This is a little misleading. The complainant must prove 3 items to prevail in a challenge. A person may not know of a TM and did use the domain in good faith, then the cmplainant may not be able to prove bad faith. It may not be a matter that the domain owner did not know the company, it may be more of a matter that the domain owner did not know the TM and used the doamin in good faith. Now, if the domain owner used the domain in hte same catagory as the TM holder and tried to claim he did not know the TM, then that would hold so much water.

"There no charge or obligation on the part of the registrant to be "aware" of every trademark that has been registered."

According to the TOS with the registrar, it is the registrants obligation to make sure there are no trademark violations with the domain they register. So yes, the registrant must make an effort to check for trademarks.

[DomainTrader]

This is a little misleading. The complainant must prove 3 items to prevail in a challenge. A person may not know of a TM and did use the domain in good faith, then the cmplainant may not be able to prove bad faith. It may not be a matter that the domain owner did not know the company, it may be more of a matter that the domain owner did not know the TM and used the doamin in good faith. Now, if the domain owner used the domain in hte same catagory as the TM holder and tried to claim he did not know the TM, then that would hold so much water.

"There no charge or obligation on the part of the registrant to be "aware" of every trademark that has been registered."

According to the TOS with the registrar, it is the registrants obligation to make sure there are no trademark violations with the domain they register. So yes, the registrant must make an effort to check for trademarks.

I maintain that there is no charge on an individual to be aware of trademarks.
Wise to know of them in this business FOR SURE, obligated to, NO. The only charge is to not use the name in an infringing manner.

Most domainers check the uspto I agree but the fact remains that the notion of constructive notice does not apply to urdp proceedings. My point was that the idea that one "ought to have known" about a trademark is presumptive and failing to know about a TM is not in and of itself evidence of any wrong doing on the part of a registrant, nor is it neccessarily a death sentence providing the use of the domain was in good faith.

The burden of proving that one knew of the tm lies with the complainant and in the absence of any evidence to support that knowledge the notion of constructive notice is meaningless.

[jberryhill]

According to the TOS with the registrar, it is the registrants obligation to make sure there are no trademark violations with the domain they register. So yes, the registrant must make an effort to check for trademarks.

I believe if you read the registration agreements carefully, you will find that the registrant is required to assume liability for any TM problems, and that the domain registrant represents that he/she is not aware of any. There is no positive duty to go looking. But there is a fine line between that and remaining willfully ignorant. I can walk around town blindfolded and shooting a gun, but it makes it hard to argue that I wasn't trying to shoot anyone.

In the normal application of US trademark law in a judicial proceeding, and indeed as expressly stated under US trademark law, registration provides constructive notice of marks. "Constructive notice" is legalese for "even if you didn't know, you should have known, and we are going to treat you as if you knew".

The UDRP was intended to apply to intentionally abusive domain name registrations. Now, when we are talking about specific intent, we do not normally apply a standard of constructive notice. Intentional behavior, otherwise known as willful behavior, requires actual knowledge.

Panels often split on the issue of constructive notice of marks. For example, if both entities are located in the US, then a panel is more likely to apply a constructive notice standard than if the parties are located in different countries.

WIPO summarizes constructive notice issues this way:

3.4 Can constructive notice form a basis for finding registration and/or use in bad faith?

Most panels have declined to introduce the concept of constructive notice into the UDRP. However, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant’s trademark registration preceded the respondent’s domain name registration, respondent was presumed to have notice of the trademark.

Relevant decisions:
Toronto Star Newspaper Ltd. v. Elad Cohen DTV2000-0006 , Denied
Kate Spade, LLC v. Darmstadter Designs D2001-1384 , Transfer
Alberto-Culver Company v. Pritpal Singh Channa D2002-0757 , , Denied
Sterling Inc. v. Sterling Jewelers, Inc and Domain Traffic D2002-0772 , Transfer
The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands D2003-0305 , Transfer

[typist]

...the evil domainer (as we all did when we started out in this "business")

I appreciate your frankness. Once I (almost) got flamed by some guy with a moral superiority complex. Guess what I found in his profile profile here on dnforum:

Top 5 Domains:
Typos...

He later changed this statement. Just like I'm going to change my username as soon as I've got enough dn$. Anyway, sometimes I think the ethics around this industry, rather than purely legal aspects, would merit a discussion.

[DomainTrader]

Right John, and since the udrp protects the rights of tm holders in general and without limitation as to the geographic location where thr tm registration took place the notion of constructive notice would place an unreasonable burden on all domain name registrants by requiring them to check with tm registries in France, Germany, Italy, Canada etc etc, prior to registering a domain; something which the average registrant may have a great deal of difficulty doing, and something the majority of domainers do not do.

[DNQuest.com]

DT, I think there are 2 different arguements here

1 - TM law
2 - UDRP proceedings

We were are concerned are UDRP proceedings. Nowhere does it say "trademark" in the three criteria laid out in determining domain cases. It is... does a person/company have rights (or greater rights) to a domain. TMs are used as a guide to establish rights to a name. Unfortunately, there is no geographic designation, or certain guidelines as to what is or is not would be concidered a TM.

All you need to do is read decisions where the complainant won even though I personally felt they should have lost. But it's all a matter if you can convince a panel if you have rights to a name to start establishing bad faith.

[DomainTrader]

DT, I think there are 2 different arguements here

1 - TM law
2 - UDRP proceedings

We were are concerned are UDRP proceedings. Nowhere does it say "trademark" in the three criteria laid out in determining domain cases. It is... does a person/company have rights (or greater rights) to a domain. TMs are used as a guide to establish rights to a name. Unfortunately, there is no geographic designation, or certain guidelines as to what is or is not would be concidered a TM.

All you need to do is read decisions where the complainant won even though I personally felt they should have lost. But it's all a matter if you can convince a panel if you have rights to a name to start establishing bad faith.

I agree, there are 2 different things going on each with its own nuances. Indeed there is a difference b/w a udrp and federal court action with respect to infringement and I concurr that the notion of constructive notice has its place in the civil proceeding.

Having said that I most certainly disagree with your representation that

"Nowhere does it say "trademark" in the three criteria laid out in determining domain cases"
That statement is patently false. Here are the 3 prongs as per paragraph
Paragraph 4(a) of the Policy:

Complainant must prove, with respect to the domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith


Note the existance of the word trademark! That paragraph has been interpreted in proceedings to include other "rights" such as common law rights although they in fact are not specifically mentioned here.