Questions about "the 3 requirements"

[madcamel]

We all know that in order to take a domain from you, the complainant needs to prove 3 things:

The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights
What if the complainant does not have a TM but his product/service is well known? Anyone recalls a case that a domain was transfered to the complainant eventhough the complainant had no TM at the time the domain was registered ?

Respondent has no rights or legitimate interests in respect of the domain name
No questions here.

The domain name has been registered and is being used in bad faith.
Does this requirement relates to the domain creation time or to the time that the current holder bought it ?
For example:
1999 - the domain aaa.com is registered by person A
2002 - company X registeres a TM on "aaa"
2003 - the domain aaa.com is sold by person A to person B
2005 - company X files a UDRP against person B.
Will company X be able to prove that "The domain name has been registered in bad faith" ?

Thanks for your help.

[DNQuest.com]

1 - If a product/service is well known, then they have a common law TM. You are confusing registered mark with TM.

2- no answer lol

3 - It has varied. It has been determined that buying an established domain can be considered a NEW registration, hence, the date of transfer is used to determine bad faith registration. The premise being that the buyer knows of the TM and that is why they bought it. It has been sugested that if you buy a domain with TM issues and there is a valid website on that domain, the buyer should have a contract stating they are buying the domain, website and teh goodwill associated with the domain/website.

[madcamel]

Thanks for your reply.
Regarding number 3 -
It is actually a domain that expired, and the registrar auctioned it (like SnapNames does with Netsol domains), so it kept the original "creation date". In this case do you think it will be treated as a NEW registration ? (Btw, I dont think there is a way of finding out that it has expired and I bought it, other than the whois change)

[sawan_n]

m not a lawyer...but this is what i feel

3- if you "are" using it in bad faith, then the "creation date" wouldnt matter be it original or the transfer....

[madcamel]

Originally Posted by sawan_n

m not a lawyer...but this is what i feel

3- if you "are" using it in bad faith, then the "creation date" wouldnt matter be it original or the transfer....

This is what I thought, but then I re-read the line that says: "The domain name has been registered and is being used in bad faith." . So as I understand it should be both registered and used in bad faith. But maybe I'm wrong here

[DNQuest.com]

registered AND/OR used in bad faith applies...

It would also be considered a new registration. Creation date will have no bearing unless you have purchased all of the goodwill associated with the domain.

[madcamel]

Alright, thanks for all the help.

[barkingmad]

Originally Posted by DNQuest.com

registered AND/OR used in bad faith applies...

I

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

http://www.icann.org/dndr/udrp/policy.htm

I don't see the word "OR" quoted.

[DNQuest.com]

ok, if you register a domain before a company has a TM, that is not bad faith registration... but after a couple years, the company establishes thier TM, they become well known.. then you start using the domain promoting thier services or products and you make money from it. Let's see how long you keep the domain. That would be considered unfair competition and infringment on thier TM. It has also been cited that what we call renewals, can be considered registrations (as in new registrations). It has happened.