Advice Please

Hi

Would like the opinion of some experienced domainers if I can, and any precedents would be great.

So, a domain owner buys the domain 'widgets.co.uk' many years ago. A few years later, 'widgets' becomes a trademarked name, but the trademark owner does not own 'widgets.co.uk' and can't make a claim to it as the trademark was after the domain.

What if the domain owner now sold 'widgets.co.uk' to a rival in the widgets industry? Could the trademark onwer now have clain of squatting against his rival, or does the fact that it was an old domain that was sold mean you cant make such a claim?

Hope that's clear guys, thanks for taking the time to read and if you have any thoughts, will be great to see what you say...

cheers

 

My personal (unprofessional) opinion is this:

Short Answer: Whoever bought the domain would not be able to use if for business purposes protected by the classes of the trademark, so there's little point in them buying it.

Long Answer:

Once a trademark has been taken out on a non-generic term, it will prevent anyone other than those who already owned a domain involving that non-generic term using a domain involving that non-generic term for the commercial purposes which are covered by the classes of the trademark taken out. This means that subsequent to the trademark, anyone trying to buy a domain involving this non-generic term could not use it for the business classes protected by the trademark.

In terms of intellectual property law, then trademarks are the strongest entity available, so if you take one out you can then freeze other new entrants using domains involving your trademark who did not own the domain prior to your trademark.

Where a term is generic, i.e. should be available for general use, this may not apply, as you could use a "generic defence" where you can say the term should be available for everyone to use, e.g. satnavsystem.co.uk should not be trademarkable in my opinion.

Rgds

 

Thanks for your thoughts, really appreciated

 

There was a case recently where someone forced the handover of a domain, although the trademark was only recently registered.

If that happened in the US, there might be grounds to challenge the trademark if the domain had been used to trade in a similar business area for significant time (over 2 years), although the legal costs would be high.
The likely outcome would be a handover with significant "out of pocket expenses", ie a sale after bargaining over what it would cost the TM holder to get the domain through the courts.

Until recently, the entire matter was a Civil Dispute, so the legal argument could continue while the disputed site was "up and running".

The ICANN rules are changing to favour the TM holder - they only have to object to the name, and the registrar is obliged to take the site down.

So now the TM holder has you by the "short and curlies" - all you have to bargain with is that you are out of pocket, and pointing out that it would cost the TM holder money to take it to court.