I was wondering if anyone could help me out with a question regarding a specific type of domain speculation. It is a matter that I haven't found adressed anywhere else yet. Here it is:
Suppose that private person A registers the internet domain 'freanet.com' after determining that the name does not infringe upon any active trademark, but without having any intention of developing a business around it. He/she immediately offers the domain for sale - let's say for $10,000.
After 6 months person B starts a (previously non-existent) business and decides to register the name 'freanet' as their trademark. Would that put B in a position to claim the domain 'freanet.com' even though it was registered by A before B registered 'freanet' as a trademark?
Any insights about this situation are much appreciated.
Dutch.
A domain name is nothing unto itself, other than a string of characters. Without formal trademark registration or notorious use your rights can be lost to another who acts more like someone seeking to develop "a mark".
Not quite my full and formal legal opinion. As any lawyer will tell you there are lots of variables to consider in a "real" (vs. hypothetical) case.
Webwork, Esq. (my other career)
BTW, anyone actually been involved in a situation like this yet (from either side)?
Fair enough Microsoft are a bigger company but you get the idea... i think his new name is MikeRoweForums.com where he explains what went on if you're interested
It seems logical to me that just because someone holds a trademark in one class, it does not automatically entitle them to a single domain that could potentially cover all classes. The trademarks for "Yale" comes to mind, and all Yale trademark holders cannot own the name "Yale.com" (Yale University, Yale padlocks, etc).
The question is this: Does a domain registrant have the right to assert a future trademark right to start a new business, as long as they do not compete or infringe on current TM holders in a separate class?
It seems to me that the current system allows bullying by current trademark holders, especially when no other similar trademark registrants are around to contest them (reverse domain hijacking). There is no text in the USPTO site that states that grant of a trademark entitles one to a domain. If this were the case, there would be floods of disputes between similar trademark holders.
The only exception to this is when a specific generic is combined with a class of goods, ex. BMG an Music. "BMG" is generic, but when combined with "Music" there is a problem.
Anyone else have any thoughts on this?
:)
