Domain Name / Trademark issue

Trademark and Domains

[eaken]

Quick GENERAL question without getting too specific to get this tagged.

I registered a domain name for our small company and never really did anything with it so its just sitting their with PPC ads with some other domain names we own but don't use. AFTERWARDS, a much larger company filed for a Trademark with the same name. They are now claiming that this is cybersquatting and demanding the domain be transferred.

Anybody have any idea whether they can retroactively make a claim on the domain?

[Lobo]

It is certainly an issue which is not straight forward and your case is much stronger than their's, regardless of the trademark...

Trademark is not an instant ownership of a domain name even if you had bought it after them, and even with the intention of cybersquatting... which is why it still continues..

They can take it to arbritation.

As with all these things, best to get some legal clarity..

[edited by: Webwork at 2:57 pm (utc) on Feb. 13, 2006]
[edit reason] Charter [webmasterworld.com] [/edit]

[davezan]

Lots of UDRPs favor the respondent who registered the domain name before the trademark was filed. One of them, in fact, resulted in a so-called "reverse domain hijacking" against the complainant.

Having a RDH ruling against you is a black eye in UDRP.

[Swiftest]

Also, be careful if you try to sell the domain to the trademark owners. They can try to entrap you and use the offer as evidence of cybersquatting. Use a lawyer if you want to sell the domain or to speak on your behalf to the trademark owners.

[Pankaj_lis]

eaken,
Your registration of domain name was well before thiey trademarked that name. So don't panic. Their claiming this means they want this domain name. tell them to bid for it and yes as rightly adviced by one of the member trade through a lawyer. Definately they will have to pay a high price for it.

[DonMateo]

As a related question - if your domain name contains a word that is trademarked in another country but not yet trademarked in your country (or the country of the ccTLD), would you still have a strong case if the foreign trademark holder later registers the trademark in your country?

I'm sure the law differs from country to country on this issue but does anyone have any first-hand experience?

[Lobo]

Talking of related questions.. if you will allow me to hijack this a little ;-)

I have a domain which is a generic word, used in everyday language ( although slang) someone has already registered it as a trademark although they are not in business and are trademark cybersquatting the name lol or equivelent of ...

How shaky is my ground?

I think I've got a strong point in case, but it does leave me open ..

[Pankaj_lis]

Lobo so u got the gold mine, enjoy it

[Webwork]

Bottom line: You need to run this past a lawyer, one versed in trademark law in the appropriate jurisdictions.

The opinions expressed here, as well meaning and earnest as they may be, will not shield you from any error in your ways.