Question about Domains and Trademark

[Harold Mansfield]

I got 2 weird calls this week concerning domains that I own and asking if they were trademarked.
I always thought I understood the basics in that you can trademark anything that isn't previously held or pending but even if granted, it only applies to things forward of when it is approved or filed.
In other words, you can't go across the internet and trademark the names of existing websites and domains and then turn around and try and claim a violation to seize the domain.

Anyone have any experience with this or know how the law spells it out?

[cbscreative]

I'm not an expert in this either, so hopefully David will show up with his usual wisdom. This was kind of covered when I was taking university classes a few years ago, but the emphasis was on copyrighting, and not much about trademarking was covered.

As I recall, the jury was still out on this issue in many regards because the law had (and still has) trouble keeping up with the Internet. Trademark cases were expensive and difficult. If someone were to have beaten McDonald's to mcdonalds.com for example, they would most likely lose but probably more because McDonald's has the clout than the fact that the law was really on MD's side. You pretty much had to prove intentional infringement is what I gathered, and that's obviously not an easy task.

The lesson for anyone with a trademark name is they had better be the first to register it or else risk losing it. If you have someone claiming trademark infringement, it's unlikely you have anything to worry about unless you deliberately took a well known name.

I can't think of any examples off hand, but there are some major companies who didn't get their trade name as a domain because they didn't act fast enough, and outside of bullying or paying an exorbitant price, they're unable to do anything about it.

[Harold Mansfield]

In the case of both phone calls, they were about domains that are either just a combination of 2 words or a made up one word name. Nothing that is, was or could be mistaken for an existing company so any filing would have to be after the fact. I mean let them have trademark if they want it, but they still have to buy the domain since I was first, right?

Looking for Dave as well, getting spoiled having a lawyer on the forum.

[billbenson]

I believe if you have a website named HP-Printers.com you are in a trademark violation. For obvious reasons, it's not to HP's advantage to make a big deal about it as they are selling HP products which is what they want unless there is some other aspect to your site they don't like.

[cbscreative]

I believe if you have a website named HP-Printers.com you are in a trademark violation.

That one I'm not so sure about. HP, yes, but with printers behind it, it could just mean you want everyone to know you sell HP printers, and I don't know if that is protected the same way HP by itself is. I suspect the law is still haggling over issues like this. But I agree it probably would never be an issue since HP should be thrilled with the sales and anyone using that name should be an authorized distributor. Plus, if HP had an issue with it, they probably wouldn't authorize the distributorship.

Harold, I seriously doubt you have anything to worry about. If the law were to allow someone to just hunt down domain names, trademark them and go after the domain owners, I would hope that law would be shot down. Everything I'm aware of makes it hard to claim a legitimate infringement case. The situation you described seems implausible.

[Harold Mansfield]

Harold, I seriously doubt you have anything to worry about. If the law were to allow someone to just hunt down domain names, trademark them and go after the domain owners, I would hope that law would be shot down. Everything I'm aware of makes it hard to claim a legitimate infringement case. The situation you described seems implausible.

That's what I assumed.

When people call with strange questions like that, it makes me wonder what they are planning or really investigating,
It's funny, anytime anyone calls to ask about a domain (which is rarely) they always sound like they are making some kind of secret covert call.

[Business Attorney]

It's pretty hard to guess what the inquiries were angling at. It may have simply been someone investigating a potential trademark who wanted to see if your URLs represented an existing use that would be grandfathered in ahead of their trademark. Registration does not preempt existing common law rights, so when a person does a trademark search that turns up an existing URL, it would be prudent to understand what, if any, common law rights the owner of the URL might have.

It also may not have been about trademark infringement at all, but rather a potential action under the Uniform Domain Name Dispute Resolution Policy. In that case, they may have been exploring whether you have "rights or legitimate interests in respect of the domain name". If you happened to buy a URL containing a trademark, even if you are not using the URL (and therefore cannot be infringing the trademark), the trademark owner may bring an action to force you to transfer the URL. If you have rights or legitimate interests in respect of the domain name, then you can defeat their attempt.

I hope this sheds some light on the issue, but as I said, it is really just a guess as to what was going on in their minds.

[Harold Mansfield]

They asked if it was trademarked, which leads me to believe that they were investigating options. I am positive that the domains are not a trademarked name, so my understanding is, even is someone trademarks them now, I still have all rights to the domain and to continue using them as I always have, regardless of what their new trademark is for.

Otherwise you could just go across the web and trademark existing domains and sue the users for infringement and I'm pretty sure you can't do that.

[Business Attorney]

If the URLs do not contain trademarks currently in use by someone else AND you are using the URLs in a manner that gives you trademark rights, then a subsequent registration cannot supplant your existing rights. However, the key is USE. You do not obtain any trademark rights by simply owning a URL. If someone comes along after you buy the URL (but before you use it) and begins using the words in the URL as a trademark and then you later begin using the URL in a way that infringes on their trademark, they can most certainly bring a trademark infringement action against you.

Again, the key is USE. Let's say you buy a URL PurpleBugle-dot-com and you use it to advertise an SEO business. A year or two later, someone opens a chain of retail stores called Purple Bugle selling casual clothing and they register the trademark. If you continue to use the mark to sell your SEO services in the same manner, no problem. The owner of the trademark is subject to whatever rights you had when he registered his mark. If you decide you can make more money by converting your website to an online store selling casual clothing, there is little doubt that the owner of the retail chain could sue you for infringement and win. The fact that you owned the URL first is irrelevant in that case.

Merely owning the URL before someone else creates a trademark does you no good at all. Using the URL to identify the source of goods or services does create rights, but only to the extent of your actual use.

[Harold Mansfield]

So if I have a the domain and it is in use as say a Comedy site and someone comes along a year later and Trademarks the term for a Comedy business..I was still first right?

I can't be in violation of a trademark that comes after the fact, using my existing idea and business model, can I?

[Business Attorney]

Your use should be grandfathered in so that they could not prevent you from using the URL. You should be safe. If they wanted to use the same or a similar name for a live comedy club, and you wanted to stop them, your use may or may not be enough to keep them from using it, too. A website and a live club may be different enough that a judge would rule that there is no likelihood of confusion (the ultimate test of infringement).

[Harold Mansfield]

Your use should be grandfathered in so that they could not prevent you from using the URL. You should be safe. If they wanted to use the same or a similar name for a live comedy club, and you wanted to stop them, your use may or may not be enough to keep them from using it, too. A website and a live club may be different enough that a judge would rule that there is no likelihood of confusion (the ultimate test of infringement).

That's pretty much how I thought I understood it. Thanks David.