Steal valuable Domains without Trade Mark by creating a business.

Hi.

I know that if I register a domain name just for selling purposes and out
there it exists a business that have a Trade Mark about the same name of my
domain, that they can claim my domain with a big chance that the domain is
transfered to them because of use in bad faith.

But, I want to know if the opposite can also be applied?!

Suppose that I have registered or purchased a very valuable domain name on SEDO
that has no Trade Mark on it. And then someday someone builds a fresh business
around the same name and applies a Trade Mark on it. Just to take the valuable
domain. Then, is there a chance for me to retain my name on precedence basis?
Even if I did not developed, used or Trade Mark the domain? Is the use in bad faith
also valid here?

I personally think that this would be a way to steal valuable domains as some
domains are far greater in price than the cost of opening a fully legal business
like about intangibles in good faith.

Thanks for any opinion...

 

Generally, a domain name registered before its trademark namesake existed has good chances of protection against future infringement claims. The idea here is that
unless you have very compelling proof the domain's registrant knew your trademark plans beforehand, how else could they know?

Now, if that registrant did something to eventually acknowledge the trademark's existence (like put ads to competing products of the mark) after, then that changes
things.

Finally, a trademark aims to prevent consumer confusion, not grant its owner some carte blanche over any and all variations of their trademark for any context.

 

Yes, somehow I understand, but let me explain better...

Example:

My domain: getspeaker.com, purchased or registered 2 years ago, NO Trade Mark, NO website.

His domain: getspeakers.com, registered 1 years ago, Trade Mark plus website plus company.

(notice the plural difference)

So it will be my non Trade Marked domain vs. his better reasoned later registered Trade Marked domain,
and he claims my domain and that is confusing for customers.

Can I in my turn claim that he is the one that registered the domain name after me, that his is similar and confusing even if I have no Trade Mark yet?

 

I wouldn't say it in those words. What you ought to do first is verify their claims.

Notice I said trademark existed, not registered. Trademark rights arise from use of the term/s in commerce, a.k.a. common law trademark. (look it up online...)

Thus, it's up to that person to demonstrate when they started using the term/s as a trademark, then compare that to your domain registration. If it's indeed shown
the person's trademark right began existing after your domain name was registered (and assuming you truly knew nothing about them), then they cannot claim that
your domain name infringes their mark because nobody had known anything about them that time.

Of course, that won't stop someone from trying if they can afford it. You just have to prepare as best as you can against such things.

 

Now is clear, you have been very helpfull.

Thank You.

 

*GENERALLY* speaking, providing the domain was registered some time before the trademark was established, you won't be at risk of losing it to a claim.

WebDev