Domains & trademarks

Can a trademark established later than a domain affect the rights to it?

[Linda_A]

Hi,

I have a question about a situation involving a domain name and a potential trademark that I hope someone can shed some light on.

For some years now, I have operated a website that is a fansite for a series of books. A gaming company producing a game based on said books will now be using the same name from the books that I use for my domain name, and I think it isn't unlikely that they may end up trademarking the name. Would this still affect my rights to the domain, given that the trademark would be established years after the site was established?

I should add that I don't currently forsee a problem developing, but just in case something changes down the road, I was interested in knowing what could potentially happen.

[davezan]

I'd love to answer your question point by point. But I think this forum's charter essentially
prevents people from "giving advice" on what's potentially a legal issue.

But here's a hint you can search in google: reverse domain hijacking.

[Linda_A]

Thanks. :)

I understand the problem of answers being seen as legal advice, although I was mostly hoping that someone might be able to point to relevant rulings on past cases that involve a trademark that is younger than a website that shares its name. :)

[Webwork]

The trick here is to post your "legal issues" in general terms and truly, don't seek what amounts to legal guidance from us webpeople. We don't ever want anyone to rely upon guidance that is insufficiently informed, both by a lack of legal and litigation experience and also insufficiently informed by the absence of facts that - in all likelihood - are needed to fashion a proper opinion but never should be put on public display in a forum such as this.

Anyone who wants to take a shot at explaining things generally is always welcome to take a shot. That includes you DZ. ;)

The "general vs. specific to your issues" distinction is actually a distinction that matters. Take what you may learn here to a lawyer/solicitor. Chances are most legal eagles won't even know as much as you do when your walk through the door - unless you search for someone with experience.

[Linda_A]

As I said, the question wasn't intended as asking for legal advice. :)

Simply trying to find out if there are any guidelines out there or past examples of this kind of situation. The search suggested did turn out some interesting information, but nothing specific to this kind of situation.

To make it more general, however, how about this: Does anyone know of a case where an existing site has run into trouble with a trademark registered well after the founding of the site?

[gpmgroup]

Any complainant must prove each of the following elements to win a UDRP arbitration:

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The domain name owner does not have any rights or legitimate interests in respect of the domain name.

The domain name owner registered the domain name and is using it in "bad faith."

[Webwork]

Linda, your efforts to "keep it general" are muchly appreciated, as are the efforts of Dave_Z and gmpgroup to address your general question . . generally. :)

[jk3210]

You could always explore trademarking your domain name/ business name first, instead of waiting to see what the other folks do.

Trademarking a domain name on the Primary Register might be a major task, but even if you only get your name on the Supplemental Register, you'll still have certain rights.

Here's [uspto.gov] what's involved.

[Linda_A]

gpmgroup,

Thanks. That clarifies it a bit. :)

jk3210,

Unfortunately this is probably not an option for financial reasons. Its a non-profit site, and I'm currently studying. Not to mention that I'm not in the US, whereas my site is, and that sounds like it would complicate the situation a bit. :)

[davezan]

You could always explore trademarking your domain name/ business name first, instead of waiting to see what the other folks do.

Trademarking a domain name on the Primary Register might be a major task, but even if you only get your name on the Supplemental Register, you'll still have certain rights.

One doesn't necessarily need to register for a trademark if they can prove common-law rights.
Ideally trademarks arise from usage, not registration.

[Kirby]

>Ideally trademarks arise from usage, not registration.

Trademarks have been lost due to this.

[Lobo]

In general terms holding the trademark does not automatically give you the rights to the domain name, even if that was registered after the trademark.

so the reverse being the case here, makes your position stronger.

I would suggest using the domain, rather than keeping it in incubation..

In my experience with domain disputes these are all factors which are taken in to consideration..

Possession is still 9/10's .. and the trademark company would have to prove certain other criteria, to have it transfered to them...

Trademark does not = rights to domain ..

My guess is if you are worrying they are already attempting threats of litigation or domain resolution..

So just incase, do your homework and prepare your points .. you hold the cards ..

[jimbeetle]

For some years now, I have operated a website that is a fansite for a series of books. A gaming company producing a game based on said books will now be using the same name from the books that I use for my domain name

I think you might have to back up a step. I'm going to assume here that the trademark is held by either the publisher or author of the book series and the gaming company will be licensed to use the trademark for its game.

So, the questions you have to ask yourself first are: If your domain name is from the book series do you currently have the right, or think you have the right, to use what you are for your domain name? Is it already trademarked? (Do a search at the Patent & Trademark Office [uspto.gov].) And I don't know how this affects anything, but beyond trademark, is it a copyrighted title or character or something along those lines?

Getting the ansers to these questions will hopefully give you better grounding on how you decide to move forward. Anything you can arm yourself with when first going to see an IP lawyer will help.

[novice]

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

This one is important to research. You can use a generic term that is trademarked as long as it is not used in a manner that would confuse it with the TM holder. A good example would be that you can use the word "apple" for a site about fruit, but not computers.