domainname vs tm

[domain newbie]

hi, domain name was registered before somebody else registered tm on the name

can be any problems up there?
thanx

 

[namestrands]

hi, domain name was registered before somebody else registered tm on the name

can be any problems up there?
thanx

You dont have to have a trademark registered, the company may have been using the name years prior to registration, if they can prove this then it is essentially a common law trademark.

Also you will need to show that you have been known by name and that you have legitimate rights to the name or at least prima-facie

You should also consider that if the owner of the trademark is better known than you under that name then they can claim confusion and infringement. If you indeed owned the domain yourself prior to the registration and you can prove that you are known by said name then you have a good chance of success against any UDRP. However if you bought the domain from someone after the Trademark Owners registration date then it most certainly will be classified as a registration in Bad Faith.

 

[Ovicide]

If your domain name registration predates the trademark holder's first use, then the trademark is subordinate to your domain name registration.

See the example mentioned in this post:
http://www.dnforum.com/showpost.php?p=446427&postcount=6

You can use the name however you want, provided your use doesn't infringe the trademark.

 

[namestrands]

Thats not actually true in terms of a UDRP.

You should also consider the result of ipod.co.uk, was registered before IPOD filed for trademark... The domain was awarded to Apple

The domain name itself just by having the same name, could be ruled as likely to cause confusion to the registered trademark. If the domain name is infact an exclusive term that defines the trademark, then it is deemed as infringment.

However I did highlight the fact about even if the domain was registered 10 years ago, transfer of ownership of the domain that post-dates the registered trademark can and most likely me deemed bad faith, unless the new owner can prove that they are known by that name.. I am not saying this is fair but it is at time of writing; true

If your domain name registration predates the trademark holder's first use

A trademark does not need to be registered.. most companies use a trademark many years before registration, this is classed under law as "Common Law" Trademark where as companies use the term ™ prior to a complete ® for a registered trademark. Of course ™ is not exclusive to unregistered trademarks

 

[Ovicide]

You should also consider the result of ipod.co.uk, was registered before IPOD filed for trademark... The domain was awarded to Apple

Maybe you're thinking of itunes.co.uk. In that case, see this post:
http://www.dnforum.com/showpost.php?p=529436&postcount=5

 

[namestrands]

yeah my mistake.. Itunes.co.uk was what I meant.. its too early

I totally agree with the Nominet resolution on that apple should of got it..