I am going to use fictional domains for this example. someone owns the domain "name.org" and does not have a trademark on "name" I later registered the domain "name.net" "name.org" has offered to buy "name.net" from me, but I chose not to sell. "name.org" claims to be in the process of trademarking "name" Once "name.org" complete the trademark process, will they be able to get the domain from me for free using UDRP, or will I be safe since I owned the domain before "name.org" had the trademark? thanks for your help -Steve
According to 15 U.S.C. § 1127(a), the first person to use a name in commerce automatically has a trademark, regardless of whether or not it has been registered. Is your site in the same category as the one with the trademark? If so, you could be violating the owner's trademark. In addition, if the owner of the name indeed does have a trademark and you approached him first about selling the name, you could be committing a crime known as cybersquatting. If the trademark owner wanted to, he could seize the name from you. So basically, name.org probably does have a trademark for the name, even though it hasn't been registered yet. Just like I have a trademark for one of my sites, unblockutopia.com, even though I never registered one.
Thanks for the speedy reply About the cybersquatting though, the .org owner contacted me about purchasing the name first. So I should be in the clear for that correct?
You're clear for that, that's correct. Cyber squatting laws are there to stop people from registering names like google.someunknowndomainextension and ransoming them for exorbitant amounts of money.
UDRP is not free. But if you're the respondent, you don't pay any fee to reply. To answer your question, domain names registered before a party's trademark right are generally safe. But you can still lose it if the party in question is able to prove you're infringing their trademark, more so if you don't reply. For example, let's say you register defg.com and put up a parking page. About 3 months later, I name my bowling ball product defg and market it. Six months after, I file an application at USPTO for defg selling such. It then became a registered trademark after fulfilling all their requirements after about a year or so. Under the circumstances I described above, I can market my defg bowling ball and you keep your defg.com domain name. We co-exist with no problems. Then a month after my application is approved, it so happens defg.com's page displays an ad for competing bowling products. I get wind of it, believe you've changed defg's parking page to take advantage of my trademark, and I have my lawyer send a C&D (although I can probably do it myself since I know how). The one I described above is not exhaustive. But it should give you an idea or so.
thanks for the advice everybody. I ended up just selling name.net to avoid too many legal hassles. (to the owner of name.org)