Domains Interlude

Started by maxi007, Nov 15, 2022, 03:39 AM

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maxi007Topic starter

Let's imagine the situation. The online store, one of the 500 largest, has a domain registered in 1998. In 2009, a small office from a completely different area of trade registers a similar trademark.
And now a large online store is converging with a trading office in court. Who should win according to common sense? Who has priority earlier and more rights to use the name? So you didn't guess.

Let's see how domain and trademark rights work in real judicial practice.
In 1999 , the domain was registered.

In 2014, a full-fledged online store with this name was created and by 2018 it had a turnover of $200M. The store sold branded clothing.

And in 2009, a certain LLC "Names" registered the trademark NAMES .

Among the areas of registration are the promotion of goods [for third parties]; procurement services for third parties [procurement and provision of goods to entrepreneurs]. Obviously, any trade easily falls into this category.

It is obvious that the online store was in a somewhat suspended state, after all, incomprehensible people had a trademark with a registration area under which their online store clearly fell. But so far it seems nothing terrible – the domain belonged to them, and it was registered already in 1998, much earlier than the trademark.

That is, if you bought a domain from someone, or if your domain is registered to the owner of the company, and not to a legal entity - the owner of the trademark of the same name has more rights, even if his mark is registered later.

And such cases, as we understand, are the majority. Domain names often belong to individuals, and even more so the old ones either remained with physicists or were resold. They are all defenseless.

I'm going to use this example as a reference when, after a while, I will still try to master a brief instruction for small business owners on patent security techniques in the field of trademarks.

Disclaimer: everything is written not by a lawyer, but by the owner of a small related business, so there may be mistakes in legal subtleties.


In general, dozens of domain name disputes have been considered, and in many there are natural revelations that pull for a whole book (and there are books on domain disputes .
Again, the trademark is not registered "in general", but according to certain classes (google the MCTU). It is also impossible not to take this into account.

This is what came to mind right away. In fact, you need to correct a lot of what you have written - the topic is very voluminous.
The message is correct - they started a business, the domain name - they registered a sign. Everything is correct here.
But the theory and justification in your material somehow does not work very well, alas.

Eric Leboeuf

With the protection of property rights, in particular - the right to a trademark or a domain name, everything is complicated. I myself read interesting reports on 100 pages and my hair stands on end. You can both prove that, as in your example, that an online store created in 2014 has a full domain name, or vice versa. The fact is that all domain names acquired from "zero" - before 2005, fall into a special caste of legal cases .. this is, firstly, and secondly, it all depends on where the domain is registered and where the court takes place.
I myself once got into a situation when I created a domain that looked like a well-known brand, and only after 9 months I received a warning first, and then a "arrival" in court, but the joke is that I lived then in France (that company is also from France ) and the domain name was registered in India. I then came out completely dry, however, in order not to make enemies, I moved to a new domain name.