Domain Name Disputes

[legalhelp]

I have a close friend who is a full time domain investor. His company mainly purchases keyword rich domains including typos of generic words.

Just a few questions he needs answered are as follows:

1) He purchased a .com domain several years ago of fairly generic two word term. Two years later another company came online with the .net version of the name. Apparently this company also owns the trademark for the term in the United States. What my friend wants to know is if he is safe keeping and developing his domain since he registered it before the company with the apparent trademarked term.

2) If he decides not to develop the domain but park it instead would it be at a higher risk or should there be nothing to worry about.

3) What does a company filing a domain dispute need to prove in order to have a domain transferred to them, and what can a domain owner do to prevent these types of issues.

4) The above mentioned investor buys mostly generic one and two word combination domains and has eventual plans to develop all of his domains. Is it safe to park domains or does this give other companies an easier way to hijack the domains.

Any advice is appreciated.

Thanks!

[SSandecki]

1) He purchased a .com domain several years ago of fairly generic two word term. Two years later another company came online with the .net version of the name. Apparently this company also owns the trademark for the term in the United States. What my friend wants to know is if he is safe keeping and developing his domain since he registered it before the company with the apparent trademarked term.

If another company owns that specific trademark legally they can attempt to get the domain take and given to them; this is called domain squatting. I'm sure it always depends on when the term was trademarked and when the domain was actually registered. I personally would try to just sell the domain back to the company for a nice profit.

2) If he decides not to develop the domain but park it instead would it be at a higher risk or should there be nothing to worry about.

It doesn't matter parked or developed; trademark infringement is trademark infringement.

3) What does a company filing a domain dispute need to prove in order to have a domain transferred to them, and what can a domain owner do to prevent these types of issues.

Legal measures are required for the company to assume the domain name from you; in this case it is possible.

4) The above mentioned investor buys mostly generic one and two word combination domains and has eventual plans to develop all of his domains. Is it safe to park domains or does this give other companies an easier way to hijack the domains.

I really don't understand this question.

[ThunderCow]

your friend is safe keeping and developing his domain

NOPE! Your friend has a weak legal claim to the domain.

In trademark law, the .com and .net are deemed to be generic qualifiers--they do not distinguish domains, and are ignored for purposes of trademark dispute analysis. If the other guy got a registration, and your friend did not oppose the registration at the time, your friend has--most likely--a worthless domain.

Also, if the other party has developed the use of the mark "in commerce"--then he enjoys further trademark protection. I am not sure of the state of the law on parked domains, but I can't imaging that a court would side with a domain parker over someone using the domain for purposes of first use in commerce. Your friend has a weak legal position from what you have told me.

[rickygips]

Issues on internet matters have really gone complicated with all the matters that have been brought by the medium. Good thing that there are people that shares there knowledge about these things.

[FrankGL]

If another company owns that specific trademark legally they can attempt to get the domain take and given to them; this is called domain squatting. I'm sure it always depends on when the term was trademarked and when the domain was actually registered. I personally would try to just sell the domain back to the company for a nice profit.

Look at the case of the person who owned Braves.com and the Atlanta Beaves and MLB wrestled the domain away from the owner saying she was squatting on it, even though she was a Braves fan.. The same happened with Sonics.com

Just registering the domain name doesn't mean you have a trademark on those keywords. However, if your friend had developed a site on the domain, his position would be different.

[flytohell]

seemed difficult!

[Corporate Gifts]

Who is is accurate. You can always get the login info at the charity office, since keeping record of these are their responsibility. Once you have logged on successfully, through the registrar's login link, change the domain email id and password, through the setup.

Now you are safe.

Good luck!

[preet]

maybe a consultation with patent attorney will help.

[macrylinda1]

NOPE! Your friend has a weak legal claim to the domain.

In trademark law, the .com and .net are deemed to be generic qualifiers--they do not distinguish domains, and are ignored for purposes of trademark dispute analysis. If the other guy got a registration, and your friend did not oppose the registration at the time, your friend has--most likely--a worthless domain.

Also, if the other party has developed the use of the mark "in commerce"--then he enjoys further trademark protection. I am not sure of the state of the law on parked domains, but I can't imaging that a court would side with a domain parker over someone using the domain for purposes of first use in commerce. Your friend has a weak legal position from what you have told me.

Issues on internet matters have really gone complicated with all the matters that have been brought by the medium. Good thing that there are people that shares there knowledge about these things.

[jonesla9]

great info thanks