domain name and trademark

ronen19711 · Mar 30, 2009

Hello,

1.if I register domain name before it was register as trademark can any one register my domain name as trademark (after i bought it) and take my domain name?
2. if I register domain name before it was register as trademark and bouild website, can any one register my domain name as trademark (after i bought it) and take my domain name after i build website?

Thanks

draggar · Mar 30, 2009

What you're referring to is reverse hijacking.

No one can just "take" your domains without serious legal action (or else its called theft). Now, anyone can file a lawsuit / WIPO against you for any reason that they want to - even if their TM was after your domain registration, it's up to the panel to judge on it.

Now, if you have some "inside information" that a company is coming out with a new product and register the domain to promote the product, then it is easier for someone to take it from you though a WIPO but if it is a generic term then it might be harder for them to take it.

naster · Mar 30, 2009

1) no
2) no

stewie · Mar 30, 2009

anything is possible and the answer will be in the details... check with a lawyer to get advice, if the domain has value.

:yo:

jberryhill · Mar 31, 2009

The questions are not susceptible of a yes/no answer.

As is common here, the error is assuming that "registration of a trademark" is the be-all and end-all of trademark issues. It's not.

In 2000, I start a company in Wilmington, Delaware which sells "BLEEM" brand dog food. This dog food becomes the most popular brand of dog food in the State of Delaware within months of my launch of the product.

In 2002, you register Bleem.com and start advertising Brand X dog food. You live in Newark, Delaware, in zip code 19711. You run a pet food store in Newark, and you are perfectly aware that BLEEM is a popular brand of dog food.

In 2003, I apply for and obtain federal registration of "BLEEM" for dog food.

Now, nobody is going to give a rip about when I obtained federal registration - what matttered was that you registered BLEEM as a domain name, knowing perfectly well that I was runnning my company just a few miles away, and it was the most popular product in your store. OF COURSE, you registered the domain name with a bad faith intent to exploit my trademark, whether I had registered it or not.