Trademark First In Use vs. Time domain registered - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**eCommando** · 12-10-2007, 12:57 PM

Hello,

Who will win in this situation?

Person A registered a domain name in 2004.
Then Person B registered the trademark in 2005. On that trademark, Person B claimed first in use as in 2003.

In this case, who will win if Person B claimed to Person A for trademark violation?

Thanks,

**Acro** · 12-10-2007, 01:37 PM

You're referring to a UDRP or some other form of legal action?

**eCommando** · 12-10-2007, 02:18 PM

UDRP ?

Also, would it make a difference in other form of legal action?

cursal · 12-10-2007, 03:21 PM

What exactly does "claimed first in use as in 2003." mean?

Is it a law?

**Acro** · 12-10-2007, 03:45 PM

I think he means that:

1. Domain was registered by person A in 2004 while there was no registered mark.
2. Mark gets registered by person B in 2005, citing prior use back in 2003

What would happen if person B took person A to a WIPO hearing via UDRP.

**stock_post** · 12-10-2007, 04:49 PM

That suck, if I have a name that I register first if some one do a Trademark later.
I should be keeping my domain.

If not, it is a bad law.

**cyberlaw** · 12-10-2007, 05:08 PM

Interesting case. Without knowing details I suspect that the case will turn on whether the person who filed for the mark after the domain was registered did it in good faith. If it was NOT done in good faith, then the domain holder has a better chance.

As always, devil is in the details . . . and particular facts are necessary.

cursal · 12-10-2007, 05:52 PM

Quote:

Originally Posted by cyberlaw

Interesting case. Without knowing details I suspect that the case will turn on whether the person who filed for the mark after the domain was registered did it in good faith. If it was NOT done in good faith, then the domain holder has a better chance.

As always, devil is in the details . . . and particular facts are necessary.

good faith?

Now I'm really interested.
IS the .com in question?

Even if it was good faith seems Person A could get a different extension.
Why couldn't person A use the .biz

Also, if there was no Reg TM on the name when purchased then there is no "bad faith" that could have occurred.

please update thread when you know more eCommando

**cyberlaw** · 12-10-2007, 09:41 PM

As I mentioned, it depends on how the details play out. If Person B used a mark, registered or not, Person A saw Person B using the mark, and Person A attempted to use the domain to profit from a mark in commerce, Person A would likely be out the domain. We don't know all the details, so we can't know for sure a likely result.

Eric
http://www.cyberlawonline.com

**Dave Zan** · 12-10-2007, 11:09 PM

eCommando, the main point is there's no surefire answer. One can toss in as
many facts and details, but no single one is going to necessarily guarantee its
outcome until you possibly reach that point.

Moses walked down Mt. Sinai with 15...(drops tablet)...10 commandments for
all to obey. Centuries later, we've got so many laws and procedures to handle
so many varying situations evn though some have similar factors.

To answer your question, there have been administrative decisions going both
ways inspite of the details you gave. Cyberlaw gave a few ideas, but it's still
not going to necessarily answer the question "who will win?".

**domaingenius** · 12-11-2007, 09:49 AM

Often people use a name and then later decide to get a trademark. When they apply for a TM they can backdate the application to the date that they first started using the name (TM). So if you have bought a domain name AFTER the date they claim first use THEN you may have a problem if you use it in the same class of use as they do, or similar. The complicating factor is that UDRP ,Nominet DRS etc etc ,and this is where I have a real gripe, don't seem to allow RESPONDENTS to make use of trade mark law in reply to a complaint that uses trademark law to make the UDRP, DRS etc in first place.
i.e. you may find that even if they have a trademark for balloons and you use the domain for bricks they will still win the UDRP/DRS whereas IN COURT they could not win. Similarly they may well have a trademark that was ONLY granted to them because they used specific colours or designs. i.e. the TM office would NOT allow someone to register say "hello" as a "word only" TM but would allow it if it was written like say "hELlO" and in blue colour. But then haveing got that TM on such basis they perversely could use the loophole in the UDRP/DRS to get your domain name "hello.co.uk" . Crap is'nt it and the rules should be changed to allow TM law to answer TM claims.

DG

**DNQuest.com** · 12-11-2007, 12:37 PM

I think explainations have gotten too complicated in this thread. If the TM application claim first usage, the apllicant will need to prove it (and generally, they can). So at teh point of first usage, they may be able to prove common law TM. If the application is registered, then the first usage date would be the date of their officail TM.

So in this scenario, person B may have greater rights. With that said, usage of the domain also plays an important part in determining any outcome of a challenge. TM holders do not have exclusive rights over a domain.

Dave, I love the Mel Brooks reference

**Brett Lewis** · 12-12-2007, 03:13 PM

Quote:

I think explainations have gotten too complicated in this thread. If the TM application claim first usage, the apllicant will need to prove it (and generally, they can). So at teh point of first usage, they may be able to prove common law TM. If the application is registered, then the first usage date would be the date of their officail TM.

So in this scenario, person B may have greater rights. With that said, usage of the domain also plays an important part in determining any outcome of a challenge. TM holders do not have exclusive rights over a domain.

Exactly, bearing in mind that owners of famous marks DO possess exclusive rights to their marks, subject to the fair uses specifically enumerated in the Federal Trademark Dilution Act.