This is a theoretical question only. Let's say you are thinking about starting a new website, say a blog for example. You have a really good idea, but unfortunately all the good .com domain names are taken already (lol), especially the domain name that matches the name of your blog exactly. When you go to the website, you don't find any content other than that the domain name is for sale, but the seller wants an amount you cannot afford, say $50,000. You do a quick search through the USPTO trademark website and find that there is no trademark registered matching anything close to this name, it's wide open. So, in reality, the owner of the domain name is not technically cyber squatting on it. Now, according to the rules of trademark (from my laymans understanding), the first person to use a mark in interstate commerce is the person with the rights to the mark. So, my question is this, what is to stop someone from registering a similar name, but with a .net extension and begin using the name and then filing a wipo dispute or even a lawsuit against the .com owner and claiming the domain? Does this happen, is this legitimate?
It wont work. If this was the case, people would be losing domain names right and left, and it just doesn't happen at all. There's nothing stopping anyone from trying it, but the name is going to stay with the original owner. There's no obligation for someone to relinquish a domain name just because someone else owns the trademark. They don't have to use it for anything. As long as they don't violate squatting laws, there's little recourse. Even at that, if they have a good attorney, they're going to put up way more of a fight than the original cost.
But that's the question, if a new business were to come along and be the first to begin to use the similar domain name and trademark in commerce, would the owner of the .com now be cybersquatting?
cybersquatting is a rather obscure term, but I'm guessing you want to know if the .net owner of the new TM would be able to fill an UDPR request and claim the .com domain? Most likely not (however it's possible - the UDPR decision is given by a panel of judges so it can go either way too) since the .com was registered prior to the .net registration and the TM submission the .com was clearly not registered with the intent of monetizing on that trademark. The $50k might just be their initial offer to test the waters, so think of the max price you'd pay for the domain and offer them half of it (even if it's like $1000). Then go from that and see if they'll negotiate. Unless it's a valuable domain with high reseller value, like a popular generic 1 word name, they might go for it.
I found these 3 things regarding UDPR. Again, this is only theoretical, I'm not after anything at all. Question: How can I lose a domain registration in a UDRP? Answer: The trademark owner must prove three things: (1) that s/he has a trademark right that is identical or confusingly similar to your domain, (2) that you have no right or legitimate interest in the domain name, and (3) that you registered and used the domain in bad faith. Question: What is "bad faith" registration or use? Answer: Facts that are considered as evidence of bad faith are described in the UDRP Policy. They include acquiring the domain name primarily for the purpose of selling or renting it to the mark owner (or the mark owner?s competitor) for money or other value that greatly exceeds the costs of the domain name. This is the typical situation that the courts have called "cybersquatting." Another circumstance that will be considered evidence of bad faith is a pattern of registering domain names in order to prevent the mark owners from using their marks as domain names; also, if you register the domain name primarily to disrupt a competitor?s business. If you intentionally use the name in a manner that confuses or misleads users into believing that your site is affiliated with or endorsed by the mark owner, and you are getting commercial value from that confusion, you will also be considered as acting in bad faith. Panelists are also allowed to determine whether other acts, not specified in the Policy, may also amount to bad faith. For example, false or inaccurate contact information on the registration is frequently considered evidence of bad faith. Question: What is a protectable "right or legitimate interest" in a domain name? Answer: If the domain holder has a right or legitimate interest in the domain name, then s/he is entitled to keep it, under the UDRP. The Policy gives some examples of rights and legitimate interests, but the contestants and Panelists may develop others. The Policy recognizes a right if (a) you are commonly known by the domain name (as a personal or business name), (b) if you are using it for legitimate noncommercial or fair uses without intent to mislead consumers or tarnish the mark owner (for example if the term is being used to generically describe what the website is about, such as ?newyorknews?) or (c) if you were using the name in a bona fide effort to sell goods or services (or you can demonstrate that you were preparing to do so) before you had any notice of the trademark owner?s complaint. The UDRP allows the Panelists to determine other circumstances of rights or legitimate interests on a case-by-case basis. Some of them have included the right to use the domain if you are a legitimate reseller of the marked goods, or acquired the domain before the trademark owner acquired trademark rights in the name.
Yes, that's correct. "Bad faith" is the questionable item in here. So as I mentioned earlier since the .com was clearly not registered with the intent of monetizing on that trademark (it didn't exist then) the .com was not registered in bad faith. However if you dig through the UDPR decisions there were cases to the contrary, especially when the defending side doesn't have a decent lawyer to fill their response.. Here is one such recent case that was taken against one of the world's richest domainers and he won.
Yep, I read that not long ago. Here is a better one, more closely resembling the hypothetical situation I described. http://www.udrpcommentaries.com/fir...d-to-domain-name-if-registered-in-good-faith/ Ok, next question: Let's say the current owner of the .com decides to sell the domain to someone else (not me). Is the new owner now subject to purchasing the domain in bad faith since I would hold a trademark prior to the new owners taking possession of it? IE- although the current owner is legally entitled to hold the domain, does that make it difficult to sell it now to another party? Or can he be accountable now for "contributory trademark infringement" now in some way? IE- must only the current owner use the website only? Hope that is clear enough to understand my point.
Perhaps this may help. First, remember that a trademark aims to prevent consumer confusion. It does not necessarily entitle someone to claim any and all variations or domain name/s of the mark. Generally, a domain name registered before its trademark namesake began to exist can be protected against future infringement claims. One exception is if the domain owner did something commercially that "acknowledged" the mark's existence after. Using your most recent question...if the domain name was registered way before its trademark sake began being used as one, s/he can actually sell it because s/he had arguably no constructive knowledge of the mark's existence. If the new owner then did something like put parking ads of competing products to the trademark, then the trademark holder can go after the new owner. A trademark can prevent cybersquatting up to a certain degree. Obviously it's up to the trademark holder to prove their claims, but how to prove that depends on each situation's given set of facts. In short, the trademark holder has to prove the domain's owner knew something on the former when s/he was going to make money off of the domain somehow. It ain't always easy, of course. IANAL, and am simply someone who passionately studies this subject.
I have a .net of a .com and myself considered filing a trademark application so I could give myself some leverage in negotiating to purchase the other domain. Potentially, the seller could decide your owning the mark makes him want to sell for less money. First of all, since two people/companies can both use the same trademark there is not necessarily some exclusive right to use one, especially if it is not a made up word. Trademarks cover different classes and so if you are using it for a blog and some other party that acquired the domain name might want to use it for the name of medical equipment. Their use and purchase of the domain name might be both non-confusing and involve no bad faith. There is nothing to say that the new owner is in bad faith just because you own a trademark on the term. A trademark does not give you exclusive rights to use that term and a violation would depend on their actual use in an infringing manner. Likewise, as long as there are non-infringing uses the seller of the domain name could not be liable for "contributory trademark infringement". So, in order for your scheme to work, the new purchaser of the domain would have to end up using the the trademark term in the exact same class as you and in a confusingly similar manner. Then they might be infringing on your existing trademark and you could file suit or an action on the domain. The outcome of those, even when you think you are sure to win are less certain than you think. Owning the trademark, and informing the seller of that domain would put him on some notice of that the market for the domain market might be limited but I think it is unlikely to get him to come to a lower price. Likewise, unless he is inducing someone to buy the domain specially to infringe on your mark he is unlikely to be guilty of any type of infringement and further, you are unlikely to pursue such a speculative action anyway. For me, I decided it was not worth the time, money or effort to try to get the domain name in that manner.
sounds to risky and expensive doing all of this hoping the domain owner will violate your trademark, when he then could just shift things around that would no longer violate the trademark.. time, trademark, legal fees would surely add up very quickly, and could surpass what the domain is even worth of even being sold for; sometimes, best off just to make a deal if you want the domain that bad; There are no guarantees in legal battles....