All Questions in Domain Names >> Trademarking a name in current use as a URL?

Trademarking a name in current use as a URL?

Posted by . updated on 11/11/2009
There's plenty of discussion and precident about infringing on an existing trademark by including that trademark in a URL. But what about the other way around? Can anyone suggest the ramifications of trademarking a name that someone else is currently using as a (low profile) URL, yet they do not appear to have trademarked it (doesn't show up on TESS). By extention, if I successfully acquired that trademark, would I have the right to demand the current URL holder forteit the URL?

Thanks!

Jeffrey
Answers (2)
 
Dave_Zan
Quote
Can anyone suggest the ramifications of trademarking a name that someone else is currently using as a (low profile) URL, yet they do not appear to have trademarked it (doesn't show up on TESS). By extention, if I successfully acquired that trademark, would I have the right to demand the current URL holder forteit the URL?


You just have a trademark for the term for its specific use.
It doesn't give you carte blanche over everything, more so
if the domain name's current usage isn't infringing your TM.
(e.g. trademark - selling widgets, domain - selling skis)

The USPTO isn't exactly the only trademark database in
the world. Someone could file one in Timbuktu and you won't
even know about it.

Anyone arguably has the "right" to demand the current URL
holder hand the domain name over. It's a different story if
you have valid enforceable claims[/i] to do so after a careful
review of any and all available facts.

If the registrant is smart, s/he might accuse you of doing a
reverse domain hijacking:

http://en.wikipedia.org/wiki/Reverse_domain_hijacking

Should it reach dispute resolution and you get an RDH, it's
like the Phantom's skull that never comes off.
 
 
clarklawyer
Registering a domain name alone provides no trademark rights and is not a trademark usage.  Accordingly simply registering a domain name does not give you the right to stop someone from using a trademark or a domain name similar to yours.

In the US, trademark rights result from usage rather than registration and a party may have rights in a trademark without having a federal registration.   A search of TESS merely establishes that there is no federal registration of a mark.


 

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