TM with claimed commerce use date 6 years ago

**checkit** · 10-25-2006, 03:36 AM

Hello,

I bought a domain about 3 years ago. At that time there was no trademark of the name. A few days ago I was contacted by a company claiming TM violation.

It appears that this company has registered the trademark in 2005 and it's now been approved about 2 months ago in 2006. My domain name is exactly the same name as the trademark that was just approved. They are claiming on the TM first commerce use date of 1999 though.

We are in a completely different markets. I have never heard of them until a few days ago.

They are asking to transfer the name to them. I don't want to give the name up.

What are my chances of winning a UDRP case and keep the name?

Thanks,

**Dave Zan** · 10-25-2006, 05:40 AM

If the name's unique, that could pose a problem.

Your using it in a different market from theirs is a big plus in your favor. More
so if it's been used for the past 2-3 years as you said for whatever it's for.

Based on what details you gave, it looks good. But be ready to see a lawyer,
especially if the other party decides to sue you via ACPA (just google it).

**typist** · 10-25-2006, 05:41 AM

Assuming "completely different markets" means either different goods / services in terms of trademark class or even an entirely different jurisdiction, bona fide usage usually shouldn't be a problem. More knowledgeable people than me should be able to ask the right questions in order to fully understand your situation.

**DNQuest.com** · 10-25-2006, 08:29 AM

There are many TMs that are not registered until years after it's use in commerce. So it is completely possible that there could be a "common law" TM protection dating back to 1999. But is the application turned into a rregistration, then there is no dispute that the first use was 1999.

As far as this goes, each domain issue is on a case by case basis. If you are using the domain in good faith and if you are in a different catagory of usage, then it would be difficult to prove bad faith. Without more details, it is hard to give sound replys. Just read up on TMs in the legals section and maybe you will find one that is similar to yours.

**Sheva** · 11-15-2006, 06:19 PM

I'M interested to know if there are case similar to this and won by the registrant of the domain.

Thank you

**Keyword Factory** · 11-15-2006, 06:45 PM

Is the TM registration documentation avaiable through USPTO? That would have their exibits to show how it was used.

**Sheva** · 11-15-2006, 08:30 PM

I want to know if there are cases filed to wipo like this and the domain holder won the case.

**Keyword Factory** · 11-15-2006, 08:55 PM

Originally Posted by Sheva

I want to know if there are cases filed to wipo like this and the domain holder won the case.

try http://www.wipo.int/amc/en/domains/s...iew/index.html

**italiandragon** · 11-15-2006, 09:00 PM

hi guys, I`m learning bout legal issues hoping I don`t have any in the future but who knows...

May I ask what is usually the cost $$$ if any for the Registant once a company fills any paperwork?

Thanks