Client being bullied for trademark infringement

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Pingler.com

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Hello all,

I am posting this on behalf of a client and we would greatly appreciate your feedback and support - thank you in advance.

Our client (based in the United Kingdom) bought a dropped domain through Godaddy auction and the domain was registered in 2009. The client proceeded to set up an online pharmacy website in 2009 and received many orders. Recently he was approached by lawyers acting for a third party, trying to stop him from using the domain, stating that it is trademarked. We checked and found that they had trademarked the name in 2012, so three years after the registration and operation of his domain.

We tried to explain to the lawyers but they are adamant that they have a case. The domain is a DOT COM.

I was under the impression that if domain registration precedes trademark registration, then the other part does not have a case as such?

Thank you for your help
 
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amplify

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I was under the impression that if domain registration precedes trademark registration, then the other part does not have a case as such?
This is simply not true.

A domain can go through expiration cycles and have multiple owners before finding its true home. In the meanwhile, someone could set up shop and trademark their phrase for certain protection. If you bought the domain after this date, and then set up where it infringes on it, it does not matter when the creation date is, rather the first archived instance of trademark infringement.

Expiring auctions are buyer beware.

Check for TMs to ensure that you're not buying one, or that you can defend yourself against one by clearly differentiating your product from the protections granted for others' marks.
 

amplify

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Let me get @bhartzer in here to see if what I am saying is accurate or if he can put it a better way.

He is in the area of domain protection and might be of assistance in protecting your client's domain if there isn't an infringement or if he believes my earlier post could be wrong.
 

Pingler.com

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Let me get @bhartzer in here to see if what I am saying is accurate or if he can put it a better way.

He is in the area of domain protection and might be of assistance in protecting your client's domain if there isn't an infringement or if he believes my earlier post could be wrong.

Thank you for your help, it is appreciated
 

Biggie

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Hi

what is the other party's trademark for?
when was it filed?
do they have active website?
what extension do they own?

on the outside, sounds flaky,

imo...
 

mr-x

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Hello all,

I am posting this on behalf of a client and we would greatly appreciate your feedback and support - thank you in advance.

Our client (based in the United Kingdom) bought a dropped domain through Godaddy auction and the domain was registered in 2009. The client proceeded to set up an online pharmacy website in 2009 and received many orders. Recently he was approached by lawyers acting for a third party, trying to stop him from using the domain, stating that it is trademarked. We checked and found that they had trademarked the name in 2012, so three years after the registration and operation of his domain.

We tried to explain to the lawyers but they are adamant that they have a case. The domain is a DOT COM.

I was under the impression that if domain registration precedes trademark registration, then the other part does not have a case as such?

Thank you for your help

You really need legal advice, not domain advice.

In my experience, if your ownership predates the TM, you can win a UDRP but that is an arbitration about ownership of the domain, not Trademark infringement.
 

Pingler.com

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Hi

what is the other party's trademark for?
when was it filed?
do they have active website?
what extension do they own?

on the outside, sounds flaky,

imo...

Other party trademark was registered in 2012 and is for 'pharmacy' They operate a .co.uk website and it is active.

Our client's domain is registered in 2009 and he has been trading since 2009.
 

bhartzer

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>> Let me get @bhartzer in here to see if what I am saying is accurate or if he can put it a better way.

>> He is in the area of domain protection and might be of assistance in protecting your client's domain if there isn't an infringement or if he believes my earlier post could be wrong.

Let me first say that every situation is different; there can be multiple factors (or even just one) that can influence whether or not there is an issue with a trademark and a domain. I'm not a domain attorney, so best if you seek the advice of a qualified domain attorney.

Usually, my experience has been that when a domain is registered prior to a trademark being filed or issued, it all comes down to "bad faith". When the current owner of that domain bought the domain (either by hand reg or when it expired), did that owner have knowledge of the trademark? For example, if I registered a domain in 2010 and a business was started with that name in 2015 and they got a TM on the name, there's no way that I would have known that the business would be started in 2015.

In the case where the client's domain was registered in 2009 and he has been trading since 2009, and the TM was registered in 2012, it seems to me that the client would not have knowledge of the TM being registered in 2012, as it was 2009 when they registered the domain name. There may be other arguments that the TM owner might have, such as the website's logo or the content on the website causing confusion between the client's domain and site and the TM holder's brand. However, that is an IP issue, not a domain issue.

What I recommend is that since the client has been made aware that there may be a UDRP or other legal action taken, that the client seek advice from a domain attorney. And if they anticipate that they may have costs associated with defending the ownership of their domain, consider domain protection. DNProtect is a company that provides that service.
 

mr-x

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Other party trademark was registered in 2012 and is for 'pharmacy' They operate a .co.uk website and it is active.

Our client's domain is registered in 2009 and he has been trading since 2009.

Did the other party have a working website before your registration date? Lot's of issues to consider. Get a lawyer.
 

bhartzer

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>> Did the other party have a working website before your registration date?
That is a good question. If the other party (the one that is claiming the TM infringement) had a website before your client registered the domain (or bought the domain from someone else), then that changes a few things.
 

Pingler.com

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>> Did the other party have a working website before your registration date?
That is a good question. If the other party (the one that is claiming the TM infringement) had a website before your client registered the domain (or bought the domain from someone else), then that changes a few things.
The other party's website was not active (according to archive.org) till 2013. Our client's website was active and taking orders from 2009.

Thank you everyone for your valued input - we truly appreciate it.
 

bhartzer

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The other party's website was not active (according to archive.org) till 2013. Our client's website was active and taking orders from 2009.
That's good to know, and I believe that would definitely could be a deciding factor if the domain gets a UDRP. I've seen similar UDRPs even result in a finding of "reverse domain hijacking".
 
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