My DN Trade Marked by others after my registration .

[garyrcanuck]

Good Morning

I would appreciate some feedback on this question. I have not contacted any legal advice as of yet.

My question concerns a DN that I have owned for a couple of years. I have never developed it, it is parked.

A couple of problems that probably will be arising are

1-- I came across a recent published book which is titled with the same name as my DN.
I believe that all publications are Trade marked?

2- I searched the TM registry and noticed that my DN name is being Trade Marked by a company not associated with the book author. This also started at a later date than the registaration date of my domain name.

My question then is , does my domain name have any legal priority as it was registered prior to the 2 above situations? Or should I attempt a sale to either of the above parties? Or perhaps I should sit back and wait for a C&D?

Thanks for any advice or suggestions you may have.

Gary

 

[RatherGood]

If the name is worth it, consult a lawyer.

 

[BostonDomainer]

Well you have no a priori rights since by your own admission you have never used the name other then to park it.

Or should I attempt a sale to either of the above parties? Or perhaps I should sit back and wait for a C&D?

Bad idea all around... seek legal advise if worth it

 

[Gerry]

Books are typically copyrighted, not trademarked.

 

[Theo]

Well you have no a priori rights since by your own admission you have never used the name other then to park it.

Parking is a legitimate monetization use of a domain.

 

[BostonDomainer]

Parking is a legitimate monetization use of a domain.

No it's not when there are clear trademark/copyright issue at hand.

 

[Theo]

No it's not when there are clear trademark/copyright issue at hand.

I think you're perusing the wrong domainer Bible.

While each case is distinct, the mere existence of a trademark does not automatically entitle its holder to the (.com) domain. In addition, the pre-existence of a domain and its consistent use (including parking) does not put its owner to a lagging position against a tm holder who acquired it at a later time.

But I will agree with your statement that if one needs to protect a domain they need to consult an attorney.

 

[draggar]

Didnt we have a similar situation with MySpace.co.uk? It existed long before MySpace.com was an established website. MySpace.com didn't (couldn't?) do anything until MySpace.co.uk started to show social networking ads - then they went after them.

Is the name a generic? If it is it could help you if it does go to a WIPO.

Since it is parked, though, I would stay away from books and what the book is about (especially if it is not generic).

Rathergood has a great piece of advice, if the domain is worth it, consult a lawyer.

Do NOT try to sell it to the author or the company. This will be viewed as bad faith in the eyes of a WIPO.

Parking - while it is a legitemate use of a domain, many WIPO panelists don't see it that way and see it as a way for you to profit off of someone else's hard work (even though you had the domain before the book and TM).

 

[Gerry]

Lesson one - people need to learn the difference between copyright and trademark
Lesson two - people need to learn the definition of trademark (in it's simplest form, it is two distinct words - trade and mark
Lesson three - there can be multiple Trade Marks issued for the same word or groups of words.

 

[RatherGood]

More pertinent questions would be, is the name a .com or .ca (or something else)

is the trademark registered in Canada, USA or somewhere else, etc.


If its a .ca name with a mark registered in Canada, probably not a good idea to take advice from Americans or contemplate "what-ifs" under WIPO you would have a much bigger problem in your own backyard.

 

[Gerry]

More pertinent questions would be, is the name a .com or .ca (or something else)

is the trademark registered in Canada, USA or somewhere else, etc.


If its a .ca name with a mark registered in Canada, probably not a good idea to take advice from Americans or contemplate "what-ifs" under WIPO you would have a much bigger problem in your own backyard.

Yeah. Don't trust the Americans.

 

[Cash Is King]

Cook Islands? LOL!

 

[Gerry]

Cook Islands? LOL!

Arrgh...pirates we be.

 

[Cash Is King]

Thats better than.. Cook De Cat

 

[RatherGood]

Yeah. Don't trust the Americans.

Well, advice from anyone outside of Canada in that regard. Didn't mean to pick on Americans specifically, but they do tend to bring the notion that UDRP/WIPO is the only game in town.

 

[Gerry]

Well, advice from anyone outside of Canada in that regard.

and don't dare take on Canada in curling.