Can someone's domain name be of my trademark?

[pipsbiz]

Let's say I have filed for (though it's not registered yet) a trademark of my company's name. Say for example, I'm filing to trademark the name Horseyyums. I chose this fictional name as an axample because I think it's clear what the product is and the name of my business does the same. Now say, Idiot that I am, I didn't check to make sure no one had that domain name and someone has purchased a domain name using Horseyyums. They aren't using it, but must plan to because they renewed it earlier than necessary. They have NOT filed for a trademark however. I have alot of materials with my company name on them and would like to keep the name, but fear that people will automatically use that domain name when trying to reach me and of course, it will get to someone else. Can they legally use the domain name if I get Horseyyums registered (or even at the filing stage) or would this be an infringement?
I wouldn't mind using a different, less common domain as long as I knew I could yell "infringement" if the other party actually set up a website with the name Horseyyums.anything).

 

[Michael Wechsler]

Good question and it has been dealt with several times at WIPO. You'll have a problem trying to wrest the domain away since their registration prior to your use would (a) be an indication of a lack of bad faith registration and usage, and (b) their use in the area you may register a mark may still not prevent these people from their prior use of the mark in their local region.

 

[pipsbiz]

Just so I'm clear - I don't really care about trying to get the domain name away from them- I just don't want them using it. I'm ok with using a lesser used domain like a dot net or something. I just can't see how they would be able to use my company's name and put a dot com behind it if I have the company name trademarked.
Are you saying they can? I'm tempted to contact them and tell them that I have filed for a trademark and that it would be advisable for them to find another name before they get their website up. But if I have no leg to stand on...
So my best and really only option is to come up with a different company name?
Sorry, I know I'm being a little dense about this...

 

[BD_Loops]

I had a similar situation happen to me actually. Domain theft is big business on the web. What a lot of companies like to do is purchase domain names in bulk, contact you, then try to sell it to you. Now in my situation we have been in business for several years and our name is trademarked, they purchased/registered the domain name AFTER we started business. It was a pain finding out who was the original register, but once we found out we contacted them, told them our name was trademarked and we wanted it back.(we found out who it was registered by viewing the sites Source<right click view source>) I told them I would be more than happy to provide the documents proving our name was trademarked. Once they heard that they were very compliant with transferring the domain name to our servers.

But remember these people could have already registered the name with an intent to use it for their business and not to resell/domain theft. So research it a little before you go to battle!

 

[Michael Wechsler]

With regard to your trademark, you will need to "police" it in order to ensure that it remains active. Essentially a trademark is an origin of a good and people should be associating it with one source. Imagine this - cocacola.com is associated with the Coca Cola company, but cocacola.net is being used by Pepsi Cola. Do you find it confusing? The more confusing something becomes, the more the chances that you can lose rights to your trademark.

Regarding policing trademarks, this can even happen with a problem called "genericide", e.g. Xerox. The company had to work to "correct" the frequent usage of the term "xerox" as a verb as in "copy" in the US English language. There have been famous marks that have been lost because of their usage, e.g. Aspirin and Kerosene which used to be trademarks for products.

 

[nicpow]

Same situation

pipsbiz, I read your post because I am in the same situation.
Would you mind telling me what happened in your case?
Were you able to get the registrar of the horseyyums dot com domain to give the domain up? Did you have to involve legal steps and were any fees involved?
Thank you very much!

 

[Michael Wechsler]

Every situation is different. There is no simple answer. If you don't have a trademark filed, I'm not sure what you are waiting for. In virtually every instance there are numerous variables which will change the probability of obtaining a domain name. Simply sending a cease and desist letter is one factor in the equation. Having trademark is another, including enforceability.

 

[Bruce_Wayne]

Just so I'm clear - I don't really care about trying to get the domain name away from them- I just don't want them using it.

You may want to review the WIPO UDRP rules. the bottom line is: They've already registered the domain, and you don't have a trademark. They're free to use that domain however they choose. It won't prevent you from registering your mark, but unfortunately, you won't be able to stop them from putting a site up. May I suggest waiting until your mark is registered and then offering to buy the domain instead?

it's clear what the product is and the name of my business does the same

Merely descriptive?

 

[Michael Wechsler]

Well... yes and no. If you own a trademark called Red Radish Shoes and someone registers the domain name redradish.com, that doesn't mean you can't register the name. You might be able to enforce a suit in the event the domain name holder decides to use the domain to try to sell shoes. Simply because someone registers a domain (without using it in commerce) doesn't mean that you are prevented from registering a trademark.

 

[Virusmind]

Trademark / Domain Name Question

I have a registered trademark on the word Virusmind. This is the name of my entertainment business. I purchased the domain virusmindmusic.com in 2004. Within days, someone bought the domain virusmind.com. Are they cybersquating? Are they infringing on my registered trademark?