Domain regged first then trademark applied for - anyone any similar experience

[shaunjock]

I regged a domain xxxxxxxx.co.uk in June 2005. A two word generic which I basically like the look of a future development project.

Since then a company has applied for a trademark with the same name as the domain but also more importantly the categories which it has listed under are along the the same line of business which I was going to use the domain for. This trademark was applied for in November 2005 and is still under evaluation.

Given that I have not started developing the domain yet I have not got a legitimate claim for a trademark appeal. Would I be risking a DRS if I started to use it in the same line as the trademark applicant.

Also someone formed a limited company in November with a very similiar name to the domain - but they are not the same organisation as the one which applied for the trademark.

I had no connection to any of the companies involved or any insider knowledge when I regged the domain (it just sounded good) and from I have not been approached about the domain but want to understand if anyone else has seen a similar situation and if there were any precendents set.

I do not want to list the actual domain on here for legal reasons.

Any advice would be much appreciated.

Shaun

 

[retired_member11]

Well, there is the principle of 'first expression' and if your dates are correct then you may have some rights. You need to be able to show that you intended to make use of the domain and the mark for the similar goods and services. In law it is not necessary to register a trademark and therefore one can have unregistered rights, but a registered mark is easier to defend in law. Otherwise one has to prove 'passing off' in court, which is far more difficult to do.

Perhaps the trademark applicant was using the mark from an earlier time but had not attempted to registered it until now. You may need to do some more research on this.

 

[olebean]

The thing about trademarks is you can have loads of trademarks of the same name but they look "different". A trademark is something thatsets you apart from other business. In your case the easy option will be xxxxxxxx.co.uk. I would trademark that first.

 

[paymatters]

My limited understanding is that no-one has the rights to a generic domain!

 

[retired_member11]

My limited understanding is that no-one has the rights to a generic domain!

They do if they have registerd the word and the domain name registrant is using it in a way that infringes those registered rights.

The term 'generic' perhaps isn't that helpful. With trademarks 'descriptive' is the important term. A descriptive 'mark' cannot be a registered trademark as everyone has the right to use it for those described goods and services. I can't claim 'apple' to sell fruit. I could claim it to sell toilet rolls, for example.

Any word can be trademarked so long as the word doesn't describe the goods or services being sold, and this is why 'generic' doesn't mean that much. 'Tomato' is generic but not if it is a mark for a brand of computer. If it is trademarked for computer equipment by a company and I have tomato.co.uk and start using the domain to sell computers without the trademark owners agreement I'm acting unlawfully. It would be the same principle if I opened a computer shop and called it Tomato Computer Shop. It's not the domain that counts, it's who has rights to a mark and whether the use of the mark when expressed as a domain name infringes those rights.

 

[texidriver]

http://www.patent.gov.uk/tm/indetail/oppose.htm[/url]

Is there a US TM?

 

[paymatters]

They do if they have registerd the word and the domain name registrant is using it in a way that infringes those registered rights.

The term 'generic' perhaps isn't that helpful. With trademarks 'descriptive' is the important term. A descriptive 'mark' cannot be a registered trademark as everyone has the right to use it for those described goods and services. I can't claim 'apple' to sell fruit. I could claim it to sell toilet rolls, for example.

Any word can be trademarked so long as the word doesn't describe the goods or services being sold, and this is why 'generic' doesn't mean that much. 'Tomato' is generic but not if it is a mark for a brand of computer. If it is trademarked for computer equipment by a company and I have tomato.co.uk and start using the domain to sell computers without the trademark owners agreement I'm acting unlawfully. It would be the same principle if I opened a computer shop and called it Tomato Computer Shop. It's not the domain that counts, it's who has rights to a mark and whether the use of the mark when expressed as a domain name infringes those rights.

Yes so even if someone had the trademarks containing apples or tomato they still wouldn't be able to take those domains off somebody else unless the domain was tomatocomputershop???

Sedo has some good cases

http://www.sedo.co.uk/legal/index.php4?tracked=&partnerid=&language=e

“The Panel determines that “target” is a generic term and a common word. Complainant does not have monopoly over any domain name with the word “target” in it. The Panel finds that Respondent has rights to and legitimate interests in a domain name that consists of a generic or common term. … Additionally, where a domain name is generic, the first person to register it in good faith is entitled to the domain name and this is considered a ‘legitimate interest.’”

 

[paymatters]

tomatos.co.uk is available!

 

[domaingenius]

What you are discussing in this thread is the beginnings of what is going to happen more and more as big business wakes up to the fact that it cannot register the domain it WANTS and will then try and get that domain. I registered a number of domains in 1999 and now see that in the past 6 months 2 parties have applied for TM's not only for their own "business" but also including, and this is one everyone needs to look out for, the Class of TM that includes operation of a website. THAT class is the one that is going to be taken advantage of I think. All "they " need to do is get a TM unopposed and then enforce that TM because you are running a web site of any sort on that domain name. The alternative is paying hundreds of pounds, and time and effort, each time someone applies for a TM for a domain you happen to have.

DG

 

[shaunjock]

An example of the type of domain I am talking is cleanwheels.co.uk (incidently free to reg) or bodytonics.co.uk (already mine so keep off!) - with two generic words which combined give a very good picture of what the service / products is that is being offered. Not as generic as say using orange.co.uk for phones or tomato.co.uk for computers. I hope that this puts it in perspective.

I did check and there is, filed under class 41, the following text relating to the application.

"providing on-line electronic publications (not downloadable); publication of
electronic books and journals on-line; information relating to entertainment or
education provided on-line from a computer database or the Internet; electronic games services provided by means of the Internet; education services"

so from this could they claim that they need the domain name to be able to provide the service?

In theory, does this mean that say a company can legitimately create a new range called Body Tonics - file for a trademark to sell their both their product / services on-line which may/may not get opposed by the domain registrant (at a considerable cost but first you got to notice that is has been submitted) and then chase me down for the domain name as a violation of the trademark if I try to sell anything remotely like a health related product through my site/domain?

Lastly, if the domain is currently parked on sedo - does this constitute a legitimate use of the domain?

 

[retired_member11]

No I don't think they could claim the domain so long as you don't use it in a way that infringes their registered class of goods and services.

 

[texidriver]

No I don't think they could claim the domain so long as you don't use it in a way that infringes their registered class of goods and services.

3. Evidence of Abusive Registration

B. as a blocking registration against a name or mark in which the Complainant has Rights;

I never understood this, if you regg ???.co.uk, the complainant could still choose another TLD or ccTLD and if they have the ???.com/net what have you blocked? What happened to first come/ first served?

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

C. made legitimate non-commercial or fair use of the Domain Name;

If you park it on Sedo and make money, even if it's ???.co.uk and the ad's are for !!! that's commercial, and there is no definition of "fair use"

http://www.nic.uk/disputes/drs/policy/

 

[domaingenius]

No I don't think they could claim the domain so long as you don't use it in a way that infringes their registered class of goods and services.

OK so what if the domain registrant uses the domain, at all, on the internet and the TM holder of that name has it registered in a Class that includes downloading material from the internet, and or operating a website ?

DG

 

[olebean]

DG

Fair use: "use of functioning processes"

By definition, that could mean that sole use of email, utilises processes.