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Domain Names Forum

Trademarked Domain Pending Delete

 1:32 am on Sep 8, 2010 (gmt 0)

Not wanting to push the rules of the forum charter, I would pose a hypothetical question:

Let's say a person is the registrant of a fairly generic but live federal trademark and has operated a business in a specific market under that name for a few years. I understand this person may have no legal standing to enforce the transfer of a domain that was registered prior to the mark, but what if that domain enters pending delete status and were about to be registered by a 3rd party?

Under ICANN rules, is the registrar obliged to transfer the dropped domain to the trademark holder? Or, can the 3rd party register and use the domain to compete in the same market? Hmm.



 7:45 am on Sep 8, 2010 (gmt 0)

Registrars are under no obligation to pre-emptively guess in what manner a trademark holder might wish to exercise their rights.

You cannot use a domain name deceptively or register a domain name with a view to reselling it at an exorbitant price to an existing trademark holder.



 11:29 am on Sep 8, 2010 (gmt 0)

There could also be other trademark holders in the same or different countries with equal rights to the domain - so the registrar cannot be seen to be giving one preference over another.


 1:13 pm on Sep 8, 2010 (gmt 0)

The registrar is under no obligtion. The hypothetical 3rd party would be free to register the name, but using it in the same market would most likely be very unwise (not to mention, unethical.)


 5:30 pm on Sep 8, 2010 (gmt 0)

Thank you all for the replies, very helpful and makes a lot of sense.

I'm particularly interested in the responses regarding 3rd party registration. It sounds to me like the value of the domain to any hypothetical 3rd party would be potentially affected by how they intend to leverage it, the ability of the trademark holder to enforce their rights and the 3rd party's ability to legally defend against any action.

In that case, it would be wise to research trademarks before investing heavily in a domain. Maybe that's common sense, but I wonder how many folk actually do that. Hmm.

Would the hypothetical trademark holder be wise to contact the registrar to put them (and any potential bidders) on notice, or do any arising disputes need to be resolved by filing a UDRP post-auction?

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