UDRP Claim: Domain registered before trademark filed

Hi,

I own a domain, and I've recently received a notice from a company saying that they own the trademark that is the domain name. I've confirmed with USPTO that they do own the trademark, however, they filed the application several years after the domain was first registered.

Now this is a pretty nice domain, a four letter LLLL, and it might be that these guys wanted to get the domain cheaply without paying a fair value to buy it, so they filed a trademark application. Does the UDRP apply in this case- am I required to transfer the domain to them? Also, am I infringing on their trademark by owning the domain?

Secondly, does the UDRP apply if I'm not in the US? For example, the trademark is registered in the United States, but I, the owner of the domain, live in a different country, where the trademark is not filed. Is the domain legally theirs?

I'm willing to take this to court and get a consult from a lawyer, but I want to know that I have a case first.

 

"Does the UDRP apply in this case?"

They can sue you or file a UDRP. It doesn't matter where you live.

"I've confirmed with USPTO that they do own the trademark, however, they filed the application several years after the domain was first registered."

You have no trademark rights by registering a domain - it has to have been used. A registration is not required under US law, so it's important to know the date they are claiming their mark was first used. It will be shown on the trademark registration (it's often not the same as the filing date). If you owned the domain prior to their usage (not the filing date), the registration itself was not bad faith. There are a number of other factors that can then come into play - did you add content to the site after they claim they started using their mark? Are you running contextual ads that might be displaying their ads?

You'll need an attorney if the sue you, and it will be very expensive (you need to factor in if the domain is worth tens of thousands of dollars or more). You can fight a UDRP without an attorney (although you really shouldn't unless you know what you are doing). It will probably run about $4K to $5K to have an attorney represent you with a UDRP - at least a good one. If you hire an attorney, make sure they have a lot of experience in these types of IP disputes. I would recommend John Berryhill. Ari Goldberger is also very good - sometimes not as accessible as John.

 

i have a similar case with you,
botw.org send me a email via a lawyer company that claim they own the term of "best of the web", ask me to close one of my sites, i have nothing to do indeed as they are a big company and you cannot fight with them.

 

You didn't say when you purchased the domain. If you are not the original registrant and you purchased it after the TM date, that could be a problem.

Ultimately it is going to depend on what the domain is. You said it's a nice LLLL, so I'm assuming it's a dictionary word. If so, it might be generic enough that you are in the clear.

 

if they own the trade mark there is very little you can do .

proper legal advise is required

 

Actually registering a domain is considered first use. It was in my case and I won. How much is the domain worth to you? Point out to them that it will cost them a minimum of $1500 to take via WIPO and that if you wanted to you could file to void their trademark based on your rights to first use.

 

Wrong. Registering a domain gives you absolutely no trademark rights. This is a fact. You have to be using a mark in commerce to establish usage rights (you can establish a date with a registration of "intent to use").

You have absolutely zero basis for canceling a trademark based on the registering a domain.

In a WIPO action, if you registered a domain BEFORE the other person established their mark, your registration can't be bad faith - which is not the same as establishing first usage. As long as your domain was parked, and their was no usage of the domain, the other side isn't going to be able to win a WIPO action.

 

I have won first use previous art , against people who have claimed trademark infringements before. If you had previous art to the domain then it is yours , did they trademark the name.com also ? They usually have to do this and you will see all major companies also registering their trademark .com

If you had previous art then they are not entitled to your website or domain.
They also have to be a .com website in order to take it away from you unless they of course already registered the trademark.com before you .

I can open apple rockets and apple computers has no case against me etc , etc. Do not be bullied , I would file a counter suite to them immediately .

 

also if they filed a trademark after you already were in business and do business in your state then they also have broken your fair business practice if you are in the united states.

 

Your post is nonsense. If you register "apple rockets" and use it to sell computer, music related downloads, or use it for anything related to Apple Computers business you can be sued.

You do not need to trademark the .com to your mark to have rights -most companies do not.

"They also have to be a .com website in order to take it away from you unless they of course already registered the trademark.com before you"

This is pure garbage. You obviously have to actual trademark experience and shouldn't claim that you do.

 

More garbage. Trademarks are granted based on classification. Everything you posted should be ignored.

 

Only a lawyer can tell you that, especially since you can't really post specifics
here that might give the other side a book to throw at you. There's too many
factors to consider other than what you stated so far.

Generally speaking, though, domains registered before a trademark existed do
have good chances of defending against infringement claims. If something has
changed acknowledging the mark's existence (e.g. domain's parking page then
shows ad of competing product of mark after) thereof, that's when things can
get murky.

One question, then, is when did the other party start using the word or so as
a trademark. If the mark has a registration number at USPTO, note its date of
first use corresponding to the domain's registration date since that detail can
become relevant.

But again, consult a lawyer.

 

who said apple rockets were going to sell computers ? You make no sense learn to read , you have no idea what you are talking about any of it . Previous art always triumphs over trademark laws, you cannot trademark something you do not own or has previous art.

Apple computers company would most definitely have to trademark apple.com and own it previously to doing so in order to prevent anyone from using that domain . You have no idea what you are talking about .

You have to trademark your .com who ever says you do not have to is a liar. Trademarks are not an end all to all things , just because you trademark something does not mean you can defend it in a court of law . Common or ordinary names such as Apple.com do not get the same protection as a unique distinctive name that is trademarked.

Anyone can open el toro mexican restaurant in any state but you cannot open an el toro mexican restaurant in the same town as one previously established there. This is considered unfair businesses practices. But, you may open one in another state , as long as their is not one that in that area , that would confuse consumers of connection between the two.

most trademarks do not have a leg to stand on and most cases are settled out of court for a reason. It is just costly to defend yourself on this , this is what most large companies rely on .

 

Oh ,
and I have defended myself and won in out of court settlements from trademark law suites from Burberry London, Decker Outdoors, Coach, Crocs, and other companies im not allowed to state .

If anyone wants to learn more about copyright and trademark should go to http://www.tabberone.com/Trademarks/trademarks.html

 

What are you using the name for? Can people confuse your site for theirs? http://www.bitlaw.com/internet/domain.html

They will lose the WIPO case since you by definition didn't register the name in bad faith.

 

You are an idiot and should not be posting about trademarks.

"Apple computers company would most definitely have to trademark apple.com and own it previously to doing so in order to prevent anyone from using that domain . You have no idea what you are talking about ."

Show me the registration for Apple.com? lol. Stop posting nonsense. Apple is a generic word - anyone could use the .com for something that doesn't conflict with their usage, but they already control the .com. If they didn't own the .com, they couldn't go out and trademark it and then take from the previous owner. You keep talking in circles because you haven't the slightest clue about what you are talking about. You can't obtain a trademark for a mark that isn't already being used in commerce.

Trademarks are granted by classification. Famous and coined marks enjoy much broader protection. Having a trademark does not mean you own that word exclusively, duh.

McDonald's has a Federal Registration. I don't care if they don't have a location in your city (or state), you can't use it to open a hamburger restaurant.

Don't confuse local trademarks with Federal registrations - and we're talking about the Internet, so that probably doesn't even apply given the broad market of the net.

"Previous art always triumphs over trademark laws, you cannot trademark something you do not own or has previous art."

Wrong again. When you file for a trademark, the examining attorney only checks for existing Federal registrations. Another person may have a common law trademark, but since there is no check done, it will be approved for publication (assuming it isn't descriptive or conflicts with a previous mark). The person with common law trademark has a limited time to contest or 5 years to try and cancel the mark. After 5 years, the Federal trademark is cast in stone. The common law trademark owner can now be limited in expanding upon their business even though they had first usage.

 

By previous art do you mean copyrights? While both copyright and trademark
are intellectual property, each has their own issues that don't necessarily jive
together.

If you're referring to copyrights, they don't apply to domains. Not unless it is,
say, the domain name's content that's arguably infringing.

 

Previous art refers to anything that has been created or part of common speech before someone tried to file a trademark on the term or mark .

 

dude again you cannot read perhaps you missed the part where it said they had to previously own apple.com to trademark it , learn to read as for the rest all your facts are wrong again , just because you trademark anything does not mean you will have protection of the law for it .

really reread everything i typed preferably slowly since it seems you have 0 listening skills or reading skills .
then reread everything you wrote.

complete idiot

do not listen to people like this , people who think they know anything but have no idea of what they are talking about .

Please get educated on trademark or copyright laws , and before answering any post please make sure you read carefully

 

Moron, Apple owns apple.com. You said they would trademark apple.com - now show me their trademark or remain the fool you are. You do not need to trademark the .com unless it used as an identifier of your business and you have a weak mark that would otherwise not be able to be trademarked i.e. buy.com. MOST COMPANIES DO NOT, you are wrong and it's obvious you have no experience in trademarks.

I see you had no defense on the other points I corrected you on, lol.