Domains and trademark question - GoFuckYourself.com

BRISK · 04-22-2004, 02:34 AM

What would happen in this scenario:

I buy a one word domain in 1999. At that time nobody holds a trademark for that word. Now five years later in 2004, a new start-up company gets a trademark for that specific word. I've never used the domain for anything, can they now force me (legally) to hand over the domain even though I owned it years before they even had a trademark on the word?

BRISK · 04-22-2004, 02:37 AM

To put it another way, is it still considered cybersquating if you bought the domain name BEFORE they were issued the trademark for that word?

gwilkins · 04-22-2004, 02:38 AM

I'm not sure if they can do it but to maintain their trademark they are obligated to defend it so you will hear from them if they notice

BRISK · 04-22-2004, 02:43 AM

Quote:

Originally posted by gwilkins
I'm not sure if they can do it but to maintain their trademark they are obligated to defend it so you will hear from them if they notice

hmmm....that's true. I'm just wondering if they would actually be successful in forcing me to hand over the domain even though I owned it years before they got the trademark on the word.

Mr.Fiction · 04-22-2004, 04:21 AM

If you never used it, and they are using it, then it's very possible that they can take it from you if you don't take some action.

If it's a very valuable domain to you, you should talk to a domain lawyer and figure out a good plan now, before they decide to come after you.

GeorgeK · 04-22-2004, 01:11 PM

They'd be unable to show that you registered the domain name in "bad faith" (since they and their TM didn't exist when you registered the domain name 5 years ago). The following case is relevant, as it mirrors your situation:

http://arbiter.wipo.int/domains/deci...2002-0896.html

So, you need not worry too much. Although, should you start using the domain name in the same field that they have a trademark, then you might be open to a lawsuit (although they shouldn't win in UDRP --- although some of the panelists deciding these cases tend to make up the rules as they go along). If their trademark is in bananas, but you use it for cameras, then you are safe.

04-22-2004, 02:34 AM	#1
BRISK Too lazy to set a custom title Join Date: Feb 2003 Posts: 12,240	Domains and trademark question What would happen in this scenario: I buy a one word domain in 1999. At that time nobody holds a trademark for that word. Now five years later in 2004, a new start-up company gets a trademark for that specific word. I've never used the domain for anything, can they now force me (legally) to hand over the domain even though I owned it years before they even had a trademark on the word? __________________ I post on GFY so that when people ask me what I do, I can tell them that I work with the mentally retarded.

04-22-2004, 02:37 AM	#2
BRISK Too lazy to set a custom title Join Date: Feb 2003 Posts: 12,240	To put it another way, is it still considered cybersquating if you bought the domain name BEFORE they were issued the trademark for that word? __________________ I post on GFY so that when people ask me what I do, I can tell them that I work with the mentally retarded.

04-22-2004, 04:21 AM	#5
Mr.Fiction Confirmed User Join Date: Feb 2002 Location: Free Speech Land Posts: 9,484	If you never used it, and they are using it, then it's very possible that they can take it from you if you don't take some action. If it's a very valuable domain to you, you should talk to a domain lawyer and figure out a good plan now, before they decide to come after you. __________________ Don't be lazy, protect free speech: ACLU \| Free Speech Coalition \| EFF \| IMPA

04-22-2004, 01:11 PM	#6
GeorgeK Confirmed User Join Date: Dec 2003 Location: Toronto, Canada Posts: 423	They'd be unable to show that you registered the domain name in "bad faith" (since they and their TM didn't exist when you registered the domain name 5 years ago). The following case is relevant, as it mirrors your situation: http://arbiter.wipo.int/domains/deci...2002-0896.html So, you need not worry too much. Although, should you start using the domain name in the same field that they have a trademark, then you might be open to a lawsuit (although they shouldn't win in UDRP --- although some of the panelists deciding these cases tend to make up the rules as they go along). If their trademark is in bananas, but you use it for cameras, then you are safe. __________________ I buy good domain names. Send lists to George (at) LOFFS.com

04-22-2004, 02:38 AM	#3
gwilkins Confirmed User Join Date: Feb 2004 Location: Vancouver, BC Posts: 744	I'm not sure if they can do it but to maintain their trademark they are obligated to defend it so you will hear from them if they notice