xrachx

Quick question if I may

I own a domain word1word2.co.uk (words are generic). At time of registering in 2008, there was no trademark on the phrase or individual words. Since then, its been pointed at a holding page with no adverts. I've had plans for it, but my day job work has come first, meaning I've not had time to develop it yet.

Over xmas, I had an email stating the domain was breaching a trademark and to hand over the domain straight away or they would take legal action against me. Looking at the trademark, it is for word2 word1, and the trademark was granted in 2009, over 9 months after I registered the domain. I made this fact clear to the person, and they said that fact may be true but if I continue to use the domain, then I would breach the TM.

I did some digging, and have found out that the trademark owner is well known in the domain world, as they have had more than their fair share of DRS/WIPO cases against them for trademark breaching domains (which from the ones I've skimmed through, they have lost each time).

My question is, can a trademark be applied retrospectively and therefore should I consider handing over the domain or allowing it to drop when they time comes around, or is this person just trying it on to get it from me free?

Thanks in advance!

Rob_F

If that's true, they arn't going to get a particularly sympathetic ear should they initiate a DRS/Legal action against you.

Coupled with the fact it's generic, you've never actually used it other than to point to a holding page, and your registration pre-dates their TM. Also, the email came from him directly, not a lawyer – which probably means he's too tight to pay a lawyer so his threats of legal action are probably just that – threats.

Looks like he's just trying his luck to me, and doesn't really stand a chance. That said, without knowing the exact name/circumstances it really is impossible to give an accurate answer.

Drop me a PM with more details if you like.

- Rob

accelerator

I would say they couldn't take the domain off you providing you did not display ads related to their new trademark, but if you ever did display ads related to their new trademark, they could claim a breach of trademark and then take the domain off you. That means your domain is now severely devalued and they are likely to be your best buyer.

Just my opinion.

Rgds

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xrachx

Thanks for your responses and confirming what I had thought
The domain, it had been bought for developing into a site, which I was recently asked to do in cooperation with a local org, so it being devalued is irrelevant luckily!

Thanks again

Sean

There is something called prior use which protects against such a thing. Unless you are trading on the goodwill of the now trademark holder or trying to pass yourself off as them, they can do nothing about it because you have prior use rights, also check that the trademark is for the words rather than a graphical mark i.e. logo etc.. many common, everyday phrases can't be trademarked as words, only graphics.

dashu1

I think it will depend on the words - Pizza and Hut are 2 generic words, but I don't think it would stand up as an argument.

Sounds like he's trying it on though.