MY Old Domain -- His New Trademark - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

08-13-2002, 03:31 PM

Hello,

I registered my domain before this other party trademark it.

What are my rights as a domain owner and his rights as the trademark owner.

I've have been using the domain in commerce since the inception.

Thanks

-Life

**fizz** · 08-13-2002, 03:36 PM

Welcome Life. Did the other party trademark just a word, or your exact domain name?

IMO you have a good degree of protection in having used the domain in commerce.

DotComster · 08-13-2002, 04:05 PM

Trade mark your domain asap - and do a search here for "trademark", yours is not the first case - but since you are the domain holder you are in a stronger position.

**DomeBase** · 08-13-2002, 04:16 PM

http://www.dnforum.com/showthread.ph...1982#post21982

**James Names** · 08-13-2002, 04:21 PM

You are ok as long as your domain registration proceeded the date the other party first started using the Term as a trademark/or in commerce. You obviously couldn't have infringed on the trademark when you registered if, if it didn't exist.

Watch out for 'common law' trademarks though -- It doesn't neccesarily need to be registered with the government to be considered a trademark in court, if the user had been using the Term previous to registration.

The only way you can get in trouble is if you now, on purpose, capitolise on your right to the domain by creating any sort of confusion with the new company.

Meaning, even though you have a right to the domain, you can't put up a site that makes visitors think they are dealing with the other company.

08-13-2002, 04:33 PM

If they registered the trademark after, then its unlikely they could show bad faith registration on your part to profit from their trademark. Given that this is a requirement for the ACPA and UDRP you should be ok.

The more descriptive/common the term the better for you too.

**Nic** · 08-14-2002, 02:09 AM

Quote:

Originally posted by Life
Hello,

I registered my domain before this other party trademark it.

What are my rights as a domain owner and his rights as the trademark owner.

I've have been using the domain in commerce since the inception.

Thanks

-Life

Hey Life don't worry about it, YOU HAVE NO PROBLEM !

08-14-2002, 03:43 AM

Quote:

Originally posted by Life
I've have been using the domain in commerce since the inception.

This is your strongest claim for the domain. If you've been using it for commerce, then you have certain common-law rights to the TM.

However, there's a big difference between the way ICANN's arbitration providers treat these cases and the way civil courts approach them.

If you get notified of a UDRP challenge, make sure you provide as much documentation as possible regarding your commercial use of this domain: emails, dated screenshots, financial transaction info, etc.

Also, I recommend you do not approach the TM holder.

However, if they approach you with an offer, take it under consideration if it's in an accepatable range, and negotiate from there. But do not, in any way, indicate it's "for sale" prior to an offer being made to you.

Unless there are other circumstances affecting this situation which haven't been stated in this thread, I'd say you have a pretty good chance of withstanding any challenges to your registration of this domain.

Miles

08-19-2002, 04:30 PM

Another interesting question maybe if I decide to sell my domain name will the same rights pass to the new owner?
You would think they would but the law may stipulate otherwise.
The reason why I'm asking is because is if you buy a brand new car sometimes the warranty will only apply to the original owner.
So since I bought the domain before it was trademarked then would the same rights apply to the new owner?

-Life

**Nic** · 08-19-2002, 10:29 PM

Quote:

Originally posted by Life
Another interesting question maybe if I decide to sell my domain name will the same rights pass to the new owner?

Ahhhh... Thats a different story all together.... life.

I don't recommend contacting the TMer first.

**James Names** · 08-20-2002, 04:28 AM

I am fairly certain if you sell your domain name that you can legally assign your interest in the domain and term to the new owner -- meaning no trademark problems for the purchaser either.