whose name is it?

[drbiohealth]

I have a very general question which I am sure is applicable to all who are related to domain names.

Whose right is it over the domain name?

1. X who registers the domain name, say abc.com, but does not trademark the domain name. Or,

2. Y who trademarks the name "abc" but say one year after the date when "abc.com" is registered by X.

Can Y claim for the domain name from X in such a case? And if Y does put up a claim then what all X can go in for. Is reverse domain highjacking rampant?

Thanks much,

 

Originally posted by drbiohealth
I have a very general question which I am sure is applicable to all who are related to domain names.

Whose right is it over the domain name?

1. X who registers the domain name, say abc.com, but does not trademark the domain name. Or,

2. Y who trademarks the name "abc" but say one year after the date when "abc.com" is registered by X.

Can Y claim for the domain name from X in such a case? And if Y does put up a claim then what all X can go in for. Is reverse domain highjacking rampant?

Thanks much,

This is a complex situation. Many factors influence rights in the scenario you've described.

One of the most important things to keep in mind is the difference between ICANN's UDRP arbitration and civil court. UDRP arbitrations are influence by, but not governed by, law. Therefore, many odd and contradictory decisions have resulted from UDRP arbitration.

Registration of a domain that is some else TM prior to the trademark registration is not a guarantee of domain ownership, although it does carry weight.

The big factor here is the question of how the domain is being used...the question of "bad faith." If you are using your domain for a site that does not infringe on the intellectual property rights and business of the TM holder, then your case is strong. If you are using your domain to steal their business, or are actively "ransoming" your domain to them, then your registration is at risk.

Another consideration is how much money you are willing to spend defending your registration. Even if the TM holder won in the UDRP arbitration, you can still challenge that in civil court, where a stricter interpretation of law will be applied.

If the domain in question is of significant value, and your registration is being challenged, then you should consult a lawyer practising in this area of intellectual property.

Miles

 

[drbiohealth]

Thanks Miles,
one more thing, how much expenses roughly a company normally bears to put up a legal case etc against the registrant.
Thanks

 

Originally posted by drbiohealth
Thanks Miles,
one more thing, how much expenses roughly a company normally bears to put up a legal case etc against the registrant.
Thanks

Depends. If it's just UDRP, it probably costs in the neighbourhood of $5K-$20K, including the ICANN arbitration fees.

If you're talking about legal action in civil courts, that could cost $50K plus. And keep in mind that if a domain registrant lost in American civil court via the ACPA, he could be fined up to $100K per domain, plus the plaintiff's court costs.

Miles

 

[drbiohealth]

does that mean that the registrant can hope to get a "max" of $5000-$20,000 for the name. Is it fair to assume that the company would prefer to compromise with the registrant in the above $$range rather than initiate a legal case worth the same $$ range.....

 

[avs162]

interesting thought which occoured to me as well.

the problems are that one

compnies would rather not set bad precedent on paying under costs to deter future situations

two

the majority of owners will fold under civil lit implementation and dont really have the resources to fight

three

if a lawyer is calling yhe shots they bill by the hour and not on money saved

just my opinion


a gentle method when approched is to ask for a nominal transfer fee and you may get if your not listed on multiple udrp cases