Trademark Question

[domainventure]

Do trademark disputes happen with retrospective effect?

For example

Xyzdomain is regged on 1-Jan-2011 by domainer

Xyzcompany tradmark xyz on 1-Jun-2011

In this case does the domainer lose control of the domain or he is sitting pretty and can negotiate with end user?

Another example

Xyzcompany already exists

Xyzdomain is regged on 1-Jan-2011 by domainer

Xyzcompany tradmark xyz on 1-Jun-2011

What would happen in this context?

Thanks for reading and your comments.

Please feel free to edit if the post lacks clarity.

 

[Indian Bob]

Looking forward to answers from experts esp. Mr Sanjeev Goyal...

 

[Jeff]

For sure, trademarks are NOT retroactive. So, if you buy a domain and later a company comes along and names itself the same name, you're fine.

However, a company can get rights in a name by trading under it, even if it hasn't formally registered a trademark.

 

[domainventure]

Thanks Jeff.

The second point is very difficult to track I would imagine ("Company can get rights in a name by trading under it"). The average domainer may not be equipped to search all the companies registered in US for example, with the name. Again for example XYZ INC and XYZ Solutions INC may be incorporated in Nevada and Delaware where there is not much public information availabe on a company's trading pattern.

I figure the immediate issue for a domainer would registering .com and .net in a scenario like that.

The .IN domainer is insulated to a certain extent, unless we register Ipad.in. You know how that would go.

 

[RetiredMember]

Looking forward to answers from experts esp. Mr Sanjeev Goyal...

Just return from Hyderabad, We will post details on this today.

 

[RetiredMember]

Do trademark disputes happen with retrospective effect?

For example

Xyzdomain is regged on 1-Jan-2011 by domainer

Xyzcompany tradmark xyz on 1-Jun-2011

In this case does the domainer lose control of the domain or he is sitting pretty and can negotiate with end user?

Another example

Xyzcompany already exists

Xyzdomain is regged on 1-Jan-2011 by domainer

Xyzcompany tradmark xyz on 1-Jun-2011

What would happen in this context?

Thanks for reading and your comments.

Please feel free to edit if the post lacks clarity.

Reply of your First Example :

Your query is not clear, See there are three important dates in Trademark are taken for consideration when any domain dispute arise.

A. Date of First use of trademark in commerce.
B. Date of Application for Trademark.
C. Date of Final Registration of Trademark (Certificate Date).

So please now detail your query again on above then we clarify.

Reply of your second example :

Same reply as of first example.

If Trademark owner gives sufficient proof that he was using Trademark term well before registration of domain name then he will get full point for Trademark (but donot forget in Trademark there are lot of other points are also considered like pictorial trademark , similarity between TM term and domains etc.)

But Trademark is not the only criteria to loose your domain name in case of dispute , TM owner requires to prove Bad Faith and Bad Usage of Domain name too ?

If you are asking for any specific reason then you can send us PM with details we will help you out.

 

[domainventure]

Thanks Mitsu. My question answered. Appreciate the response.