acronyms and trademark law scenario - help

[montel]

here is a scenario:
1. you own a 3 letter dictionary word and possible acronym domain (eg. 'mug.com')
2. you leave the page blank and do not park this domain.
3. another company has a trademark over the word 'mug' (their company is called mug ltd.)
4. the company has owned the trademark before you registered the domain.

my question:
will you lose a wipo case to mug ltd?

note i do not own mug.com, it is only an example.

 

[VirtualT]

Hi montel, I have asked this same question on a few forums.

From what I can gather, there are no hard and fast rules to this problem, at the end of the day it comes down to whether or not wipo sees you have registered/acquired the domain for the purpose of reselling to a TM holder, or have acquired or are using the domain in bad faith.

Bad faith being the operative words.

AFAIK, simply owning a TM domain is not against the rules in itself, it's what you do with it that counts, if in the event of a dispute, you can claim rights to the domain by the way of usage or development, you are in a far stronger position than if the domain is parked or empty.

At the end of the day, the impression of your intent that you leave on the judges can mean more than anything else.

 

[DNQuest.com]

bad faith can be very broad... If you have a domain that could be contrued as infringing, put a site up immeadiately (if you have already been contacted and then put a site, you arguement is weakened). Remember, panelists have heard many "i was gonna..." explainations. Take action, usage is very important (both positively and negatively). Never compete and use deceptive practices.

 

[flybuzz]

sell it before you get in trouble.

 

[Dave Zan]

If it ever reaches, say, UDRP and the details warrant a response, be sure to
reply promptly.

 

[Ian]

sell it before you get in trouble.

not wise words...this would very unprofessional. think about the person who buys the domain??? I would advice you not to put up anything on it...just leave it as it is and consult a lawyer. Otherwise if the company makes an offer on it don't be so hard on them because if the cases goes to WIPO chances are high you will lose it!