When do rights start accruing ?

[domaingenius]

I read somewhere a case that I cannot now find ,that as soon as a company
registered "A" domain name they immediately started accruing IP rights in the
name simply from the fact it was registered. Any one give me any
assistance in proving that IS the case ?. In fact it is to help me fight
a trademark application that I am in middle of that they are desperately
trying to win by pointing to the fact I was NOT using(Parking) the domain until
a certain date. My argument to counter that will be that as soon as the
domain was regged I started accruing rights in the name in question (as I have
seen a case somewhere to that effect thus my post as cannot find).

Thanks
DG

 

[Dave Zan]

I read somewhere a case that I cannot now find ,that as soon as a company
registered "A" domain name they immediately started accruing IP rights in the
name simply from the fact it was registered.

Generally speaking, registering a domain name doesn't bestow any intellectual
property right whatsoever. That's (likely) stated in your registrar's agreement.

What you're probably referring to is using the domain name as a trademark by
the time it's registered. Not sure how to word this, but maybe something like
one's been using widgets.com to sell widgets by the time they actually regged
or got the domain itself. (though I wonder how the heck that happens...)

Just thought I'd also point out USPTO has a registration for clubdice.com for
advertising and directory services since that seems to be what you're trying
to argue, more so when you started doing that.

 

[domaingenius]

Dave


Thanks for your reply but let me clarify what exactly I am looking for.I
will talk hypothetically.
Say I registered "A" domain on 1st January. I immediately registered the domain name with a number search engines and parked it on a simply page saying that website was under construction and coming soon.
Then on 1st February the domain entered several search engines and
got a few hits from visitors. Then on 1st May I parked domain name
with a parking company and it received numbers of visitors and still does
from thereon in.

Now my contention is ,and I am looking for case law to support
this, that I started accruing rights in that domain name at the
latest from when it was registered with the search engines
and started appearing on them, if not from when I registered it.

You see the company who are applying for a TM did not
announce there intentions to use said name until 18 months
after I regged and used it. I do know that there is a case
somewhere that said the trademark holder (who was going
after a domainer's domain) acquired rights from the date that
the name was publicly announced and another case that
said that a domain was an "instrument of fraud" in that anyone
checking the domain name whois record would be misled . It is my
intention to turn these types of Judgement on their heads and use
them against this particular TM applicant.

Any cases that would help gratefully received.

DG

Generally speaking, registering a domain name doesn't bestow any intellectual
property right whatsoever. That's (likely) stated in your registrar's agreement.

What you're probably referring to is using the domain name as a trademark by
the time it's registered. Not sure how to word this, but maybe something like
one's been using widgets.com to sell widgets by the time they actually regged
or got the domain itself. (though I wonder how the heck that happens...)

Just thought I'd also point out USPTO has a registration for clubdice.com for
advertising and directory services since that seems to be what you're trying
to argue, more so when you started doing that.

 

[marcorandazza]

Trademark rights, under U.S. law (I don't know UK law) grow from use... however, that use must be *trademark use*. It does not sound as if your use was *trademark use* - but rather merely token use. I am not aware of any case law that would support your desired rule -- that you started accruing *trademark rights* in that domain name at the date it was registered, or registered with search engines.

There may be additional facts that would turn my opinion around, but based on what you've posted, you have virtually zero IP rights. You may still have a right to possess the domain name (or maybe not), but I can't see how you have sufficient rights to oppose the TM application.

 

[domaingenius]

Trademark rights, under U.S. law (I don't know UK law) grow from use... however, that use must be *trademark use*. It does not sound as if your use was *trademark use* - but rather merely token use. I am not aware of any case law that would support your desired rule -- that you started accruing *trademark rights* in that domain name at the date it was registered, or registered with search engines.

There may be additional facts that would turn my opinion around, but based on what you've posted, you have virtually zero IP rights. You may still have a right to possess the domain name (or maybe not), but I can't see how you have sufficient rights to oppose the TM application.

Marc thanks for your reply. I do not so much need to prove trademark use, more that I have accrued common law rights (i.e. I guess could say
unregistered trademark rights or lesser strength than that) .I earned money from the domain and the use is a class that is trademarkable.

DG

 

[marcorandazza]

Lets step back a bit.

Why is it that you want to de-rail their TM application? Perhaps that isn't necessary, and you can achieve your goal without doing so.

 

[domaingenius]

Lets step back a bit.

Why is it that you want to de-rail their TM application? Perhaps that isn't necessary, and you can achieve your goal without doing so.

I want to derail their TM because I want to actually develop the domain
more and I know that what they want to do is get the TM and go
for my domain (.com) they just got the .co.uk through a
DRS . These people have mega bucks and simply instructed a tm
lawyer.

DG

 

[marcorandazza]

A big question I should have asked earlier -- is this a US trademark application, or a UK one?

Also, if you want to develop the domain, then this may be a good time to get a move on!

 

[domaingenius]

A big question I should have asked earlier -- is this a US trademark application, or a UK one?

Also, if you want to develop the domain, then this may be a good time to get a move on!

Marc, it is a UK application.

DG

 

[marcorandazza]

Well then my viewpoint is probably no stronger than that of anyone else... I'm sorry. I just don't all that much about UK rights. I've done UK applications and dealt with UK domain name disputes, but something like this delves a little deeper into UK trademark law than I would be able to intelligently opine upon.