Does a Trademark trump UDRP ?

[domaingenius]

Under what circumstances would a Trademark no trump a UDRP procedure ? I have found a place that I can register a simple word only trademark in India for $450 and am considering whether this would suffice as protection against an earlier trademark in another Jurisdiction ? This of course is entirely hypothetical.

DG

 

[draggar]

I am not a lawyer but...

Trademarks aren't just on the word, it's also on the usage. If I got adobe.com and used it for a site on the native American tribe or the building style (and keep all ads relevant) there is very little the company could do.

Plus, it sounds like there is already trouble on the domain / keyword do any TMs filed now would be irrelevant and might actually look bad.

I also think TMs are only good in the country where they are registered.

 

[domaingenius]

I am not a lawyer but...

Trademarks aren't just on the word, it's also on the usage. If I got adobe.com and used it for a site on the native American tribe or the building style (and keep all ads relevant) there is very little the company could do.

Plus, it sounds like there is already trouble on the domain / keyword do any TMs filed now would be irrelevant and might actually look bad.

I also think TMs are only good in the country where they are registered.

Noted and that may be case in USA. In the UK and Europe you have 5 years from date of registration of the Trademark to show some use of the trademark. You do NOT have to show any use until end of 5 years. Of course I should reiterate that all my applications for domains and trademarks are genuine and used genuinely, I just hate having some large corporation seek to crush me !. I will though have to double check that India applies same 5 year rule.

The situation you advise. If you had say Adobe (c om ) with NO trademark then they would take from you with UDRP even if you sold ice cream. However of you had trademark for class of trademark that covered ice cream sales then you would be safe. That is type of situ I am looking into/at.

Regards

DG

 

[katherine]

Trademarks are not absolute, they have a limited scope. Plus they must be used to carry any weight.
The best protection is bona fide usage.

Disclaimer: not legal advice.

 

[domaingenius]

Add to previosu post. As for Country of validity. Yes you are correct, but does not matter if TM is in India or UK in this case as my intended market is of course in India !!.

DG

 

[charlescarreon]

Under what circumstances would a Trademark no trump a UDRP procedure ?

Meaning no disrespect, but this question is not clear enough to answer. I'd like to help, but what do you mean? And if you wish to exit hypothetical-land, and speak concretely, PM me.
Chas

 

[marcorandazza]

Meaning no disrespect, but this question is not clear enough to answer.

Thank you. Sometimes questions on this forum are harder to decipher than the manual that came with my wife's Hyosung.

 

[charlescarreon]

Fortunately, motorcycles have some obvious clues to interpretation built into their design.

 

[Dave Zan]

Speaking of which, WIPO's...err...manual has some obvious clues on when a UDRP "trumps" out a TM:

http://www.wipo.int/amc/en/domains/search/overview/index.html

Or at least when a domain holder can "win" over a trademark, if that's what the OP meant.

Off-topic, but I read recently that WIPO's turning paperless and become mandatory by March 1st. You
lawyers might have to hold on to all of those thick paper filings as mementoes or maybe auction them
on eBay.

 

[domaingenius]

Sorry to all I do sometimes type too quickly and unclearly to . Really what I simple meant to ask was. If I have a domain name and a Trademark ( in whatever Country for whatever Class) for that same name does that immunise you against a UDRP from someone who may hold a trademark for the same name in a different Country ?. If not then are there any relevant decisions ?.

Thanks
DG