Rights to domain if I have registered trademark?
I just registered a trademark. Do I have any legal recourse to seize a domain name of the same name that is not currently in use, even if the current domain owner registered the domain before my trademark?
Tags: domain, registered, Rights, trademark Posted in
September 4th, 2010 at 6:34 pm
No. If you trademark a name, but the domain has already been registered, you have the option of purchasing the domain name from him, or waiting until it runs out and trying to pick it up then.
Even if the domain were registered AFTER your trademark, you still don’t have the right o seize the domain.
September 4th, 2010 at 7:16 pm
If the domain name was registered first, you may have a problem (it could be interpreted as YOU trying to infringe on an existing domain by later registering a trademark, rather than the domain owner infringing on your trademark).
In any case, you will probably have to sue.
However, see, e.g.:
http://faculty.ischool.syr.edu/mueller/study.html
http://cyber.law.harvard.edu/property/domain/main.html
September 4th, 2010 at 7:31 pm
Not sure of WIPO rules but I think they’re similar to UK Nominet .co.uk rules, which is that you have to own rights in the name (which you can show, it doesn’t matter they got there first) AND that in the hands of the registrant the registration is abusive. That’s your problem, because it isn’t being used. A typical abusive registration in your situation would be if they were using their domain to divert people away from your legitimate website.
Example, say I registered levis.co.uk before anyone else, but I don’t use it, there’s just a 404 or 403 error if you go to the page. Levis Jeans want it back because they hold all the intellectual property for Levis jeans and they want to sell jeans on the website. They’ve emailed me to buy the site and I’ve said ‘no thanks, I might want to sell Levi’s Fruitbowls in a few years’ time’. They would probably not be successful in any claim to wrest the domain name away from me.
But instead if I’d written Levi’s Official Store logos all over the site and I was selling cut price inferior jeans from it, they could probably have the domain name transferred to them because I’m abusing their rights.