Trademarks





BigGeorge

BigGeorge
Donating Member
Registered
#1
I need someone well-versed in trademark laws before venturing to a trademark attorney. Here's the question, and it's a domain name question:

A domain name (we'll call it domain #1) is registered December 2005 and is similar to an already existsing domain name (we'll call call it domain #2).  The owner domain #2 was reistered first but doesn't trademark his domain until January 2006.

Does the owner of domain #2 have any legal rights to domain #1?

Thanks!
-G



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MC MUSTANG

Peace Keeper or Ban Hammer-it's up to you; IDMBT#9
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#2
Big G, I am no expert here, but domain names kind of have to be registered to be created. If Domain #2 was first but trademarked after Domain #1, there may be a small "intellectual property" issue...

Don't know for sure... just thinking out loud.
 

omslaw

Michelle owns my Busa
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#3
That's a hot topic! A lot will depend on whether the Registrant of Domain 1 has any Trademark claims to the name.

When was Domain #2 registered?

I believe that there may be some 'case law' on 'cybersquatters' and those who register domains that are similar to others hoping to get the 'pay-per-click' traffic.
 

BigGeorge

BigGeorge
Donating Member
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#4
Big G, I am no expert here, but domain names kind of have to be registered to be created.  If Domain #2 was first but trademarked after Domain #1, there may be a small "intellectual property" issue...

Don't know for sure... just thinking out loud.
I just edited my post to make it a bit more clear about registrations.
 

BigGeorge

BigGeorge
Donating Member
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#5
That's a hot topic!  A lot will depend on whether the Registrant of Domain 1 has any Trademark claims to the name.

When was Domain #2 registered?

I believe that there may be some 'case law' on 'cybersquatters' and those who register domains that are similar to others hoping to get the 'pay-per-click' traffic.
Domain #2 was registered before domain #1.

This isn't a case of trying to capitalize on a mistyped name. Here's an example of what the 2 domains look like.
domain #1 - expertworld4you.com
domain #2 - world4you.com

-G
 

omslaw

Michelle owns my Busa
Staff member
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#6
Big G, I am no expert here, but domain names kind of have to be registered to be created. If Domain #2 was first but trademarked after Domain #1, there may be a small "intellectual property" issue...

Don't know for sure... just thinking out loud.
I just edited my post to make it a bit more clear about registrations.
It helps that domain 1 was registered first. Further, it helps that it has been trademarked.

Check this story out: Microsoft Sues Cybersquatters

"...Anticybersquatting Consumer Protection Act. That law, which was signed into law by President Clinton in 1999, imposes fines of up to $100,000 in damages for anyone who, with bad-faith intent to profit, "registers, traffics in or uses a domain name that is identical to, confusingly similar or dilutive of" an existing trademark,..."
 

BigGeorge

BigGeorge
Donating Member
Registered
#7
Big G, I am no expert here, but domain names kind of have to be registered to be created.  If Domain #2 was first but trademarked after Domain #1, there may be a small "intellectual property" issue...

Don't know for sure... just thinking out loud.
I just edited my post to make it a bit more clear about registrations.
It helps that domain 1 was registered first.  Further, it helps that it has been trademarked.

Check this story out:  Microsoft Sues Cybersquatters

"...Anticybersquatting Consumer Protection Act. That law, which was signed into law by President Clinton in 1999, imposes fines of up to $100,000 in damages for anyone who, with bad-faith intent to profit, "registers, traffics in or uses a domain name that is identical to, confusingly similar or dilutive of" an existing trademark,..."
"registers, traffics in or uses a domain name that is identical to, confusingly similar or dilutive of" an existing trademark,..."

That is where my confusion is. Is the law pertaining to a domain name that was already trademarked?

BTW... domain #2 was registered before domain #1.
 

PandaNin

Donating Member
Registered
#9
IMO no, owner of domain # 2 does not have right to domain # 1. Reasoning: Domain # 1 was registered and in-use prior to domain # 2 being copyrighted.

The question will come down to something like, "is there a clear and present opportunity for a bystander to mistake domain # 1 for domain # 2 and in doing so could it cause harm to domain # 2."

If the opposite were true I could go out today, register www.myhayabusa.org, trademark www.myhayabusa.org and take Capt to court and ask that his site be shut down.

Part of the discovery will revolve around whether or not domains # 1 and 2 compete in the same space or # 1 attemps to look like or mimic # 2 in any way.


I'm not a lawyer but I did stay in a Holiday Inn Express last year!
 

Over_Easy

GEO-STABILIZATION EXPERT
Donating Member
Registered
#10
BG,

Let me start by saying I am not a lawyer. I don't believe registering an internet domain is the same as trademarking. You simply have rights to it as a DOMAIN name. If it is SIMILAR, as in your example, but they trademark protected their name before you, then I don't believe you would have a case.

I worked with Atlanta Centennial Olympic Properties for the 96' Olympics protecting against Olympic trademark infringements and ambush marketing. I have some family who is a highly renowned trademark lawyer and we talk about interesting cases he has every now and then. Next time I speak w/ him (weekly) I'll ask for his opinion if you're interested.
 



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