question Person registered a trademark after I've owned a .com for years - can they claim it?

[magnate]

I own [mydomain].com, and have done so for several years.

I just ran a trademark search and found that [mydomain] was just registered as a trademark ('service mark', if that makes any difference) very recently; just a month ago.

I'm just wondering - can this trademark owner claim ownership of my [mydomain].com domain?

 

[karmaco]

If your domain ads or development have nothing to do with how they intend to use the trademark word or words you are good. You registered a domain before the inception of their trademark. I am going to assume they have another extension because most people want to get a domain in the same time frame they are looking to trademark.

Do not contact them. Do not have ads that could be linked to their service. As long as you do that you are good. I doubt they can get a name from you if you do as I mentioned.

 

[dordomai]

I own [mydomain].com, and have done so for several years.

I just ran a trademark search and found that [mydomain] was just registered as a trademark ('service mark', if that makes any difference) very recently; just a month ago.

I'm just wondering - can this trademark owner claim ownership of my [mydomain].com domain?

No, unless you do something stupid. As long as you don't target the TM holder(ppc ads in their niche, contacting them, asking unrealistic prices, redirect to competitors etc.) you are unlikely to lose the domain.

 

[Kuffy]

If your domain ads or development have nothing to do with how they intend to use the trademark word or words you are good. You registered a domain before the inception of their trademark. I am going to assume they have another extension because most people want to get a domain in the same time frame they are looking to trademark.

Surely if you use the name in their market before they attempted to register it, then you can contest the registration. If it is just parked and doen't have related ads, then you probably can't. I assume they had advice on the registration, and the agent looked into this.

 

[karmaco]

Surely if you use the name in their market before they attempted to register it, then you can contest the registration. If it is just parked and doen't have related ads, then you probably can't. I assume they had advice on the registration, and the agent looked into this.

Contest the registration? Domains are first come first serve. He can’t contest anything unless he the OP had a trademark in place first. Now that someone else has applied for a trademark it’s the OP’s job not to infringe on that trademark or give the appearance of infringing.

 

[dordomai]

Surely if you use the name in their market before they attempted to register it, then you can contest the registration. If it is just parked and doen't have related ads, then you probably can't. I assume they had advice on the registration, and the agent looked into this.

related ads work always against you not in your favour.

If you have a trademark and someone else has a domain registered before your TM and continues to serve ads related to your business you can file an UDRP and might win the domain.

If you register a domain which serves ads related to specifc niches and someone registers the TM after you you have zero rights to anything and the TM holder might even be able to steal the domain from you.

registering a domain is not equal to a TM it does not give you any rights to anything.

If you apply for a trademark no one cares if a domain with that name exists or looks at ppc pages.

 

[Name Trader]

If your domain ads or development have nothing to do with how they intend to use the trademark word or words you are good. You registered a domain before the inception of their trademark. I am going to assume they have another extension because most people want to get a domain in the same time frame they are looking to trademark.

Do not contact them. Do not have ads that could be linked to their service. As long as you do that you are good. I doubt they can get a name from you if you do as I mentioned.

I would just like to add a comment to this. Do not have ads that could be linked to their service, or their competitors service.

 

[Kuffy]

Well I'm not a lawyer, so my knowledge is derived from my readings, and not from legal training.

I was under the impression that if you had an established business - ie. you owned a parked domain that served paid advertising in a market segment, then you had established a right to use the name if at the time of starting the business it did not infringe any rights. The impurtant element here is the timing. You can't introduce ads after somebody has started a new busness, and as it has been suggested, you should keep away from any new ads in that market sector.

I seem to remember the case of gmail.co.uk as an illustration of this point.

 

[dordomai]

Well I'm not a lawyer, so my knowledge is derived from my readings, and not from legal training.

I was under the impression that if you had an established business - ie. you owned a parked domain that served paid advertising in a market segment, then you had established a right to use the name if at the time of starting the business it did not infringe any rights. .

yes a court may view PPC parking as a legitimate business, many UDRP panelists do not because they are biased. if you serve niche ads on a TM name you can lose the name at any time. You may not, it's a gamble but one that you will often lose.

I think you went one step further and said said that parking a domain with PPC will somehow prevent someone else from registering a TM or you could cancel a TM if you had a domain before the TM.

That is as far as I know not true. You can not register hundreds of names, park them and then go after anyone who registers a TM on any of them.

 

[cooljub]

Best make sure any automated ad servers don't start generating ads in the TM holder's niche as their business becomes established too. You may able to choose to exclude certain types of ad.

 

[Steven McEvoy]

Look your golden you purchase the domain before the TM issued which means you have nothing to worry about.

I would sugges you don’t park it just put a basic professional sales landing page on it, and sit back and wait for the far check!

Stay away from ads! Or any development ideas.

 

[Dominique]

I own [mydomain].com, and have done so for several years.

I just ran a trademark search and found that [mydomain] was just registered as a trademark ('service mark', if that makes any difference) very recently; just a month ago.

I'm just wondering - can this trademark owner claim ownership of my [mydomain].com domain?

Hello @magnate !

The fact you registered your domain before the trademark or service mark (for domainers its pretty much the same) was registered makes it harder (not impossible!) for complainant to prove bad faith registration.

Can the trademark holder claim ownership of your domain?
It depends on many, many factors.
Firstly, we know nothing about your domain name and how do you use your domain. Also, we know nothing about the mark.
So, any advice here would be nothing but a blind guess.

 

[mr-x]

I own [mydomain].com, and have done so for several years.

I just ran a trademark search and found that [mydomain] was just registered as a trademark ('service mark', if that makes any difference) very recently; just a month ago.

I'm just wondering - can this trademark owner claim ownership of my [mydomain].com domain?

Weird, just had the same thing happen.