A group of individuals owns a website for their company, which they registered over ten years ago. Recently, another organization contacted them claiming to own a trademark with the same name and asked to discuss transferring domain administration rights to them. The company was asked to submit an official request along with their seals and justifications, and until all the necessary data is available, they need to determine how to proceed. The organization is hesitant to give away the domain because it is well-established and heavily used.
The following are the questions that arise:
1. What happens if the trademark was registered after the domain was established? Conversely, what if it was registered before the domain? According to RIPN regulations, priority is given to the trademark owner's registration. If two applications are submitted simultaneously, preference is given to the one submitted by the owner of the similar trademark.
2. If the trademark owner does have some claim to the domain, can the company dispute this if the trademark is in Cyrillic but the domain is in Latin characters?
3. If the opponent's trademark is closely related to the domain name, could the company save the site by obtaining their trademark for "name.com," corresponding to the spelling of the domain?
It is possible to register trademarks with the same name as long as they belong to different categories.
However, this usually only becomes an issue if it is brought to court. It is likely that the client in question is being overly cautious.
It is crucial to register the trademark before the domain name. If not, it's possible that they registered the brand to the domain.
In such a case, you can consider approaching them with an offer to transfer the trademark to you which they have associated with the domain name.
I ended up in a situation where I registered a few domain names with new domain extensions such as .help and .online of a major bank, using the website https://uniregistry.com. Out of these, one was transferred to the ru center by changing the registrar.
However, none of these domain names were put to use as there is no website associated with them. I am wondering if I have violated any laws by registering them with a registrar based in Cayman Islands.
If the trademark was registered after the domain was established, the company that owns the domain may still have certain rights to continue using it, especially if they can demonstrate long-standing usage and goodwill associated with the domain. However, if the trademark was registered before the domain, the trademark owner may have a stronger claim to the domain. According to RIPN regulations, priority is given to the trademark owner's registration. If two applications are submitted simultaneously, preference is given to the one submitted by the owner of the similar trademark.
The use of different character sets (Cyrillic for the trademark and Latin for the domain) does not necessarily prevent a dispute over the domain. If the characters represent similar or identical words or phrases in different scripts, the trademark owner may still have a valid claim to the domain. It's important to seek legal advice to understand the specifics of international trademark and domain name laws in this case.
If the opponent's trademark is closely related to the domain name, there could potentially be grounds for a dispute. The company would need to consider factors such as the similarity between the domain name and the opponent's trademark, the nature of the goods or services offered under the domain name, and whether there is a likelihood of confusion for consumers. Legal advice should be sought to determine the best course of action in this situation.
If the company has been using the domain name for a significant period of time, they may have acquired common law rights to the name, even if it is not protected by a registered trademark. These common law rights could provide some level of protection against a claim from the trademark owner.
It's important for the company to gather evidence of their use of the domain name, including the duration of use, business activities conducted under the domain, and any marketing materials or branding associated with the domain name. This evidence can be crucial in demonstrating the established goodwill and reputation of the domain.
In some cases, negotiation between the parties can lead to a mutually acceptable resolution, such as coexistence agreements or licensing arrangements. It's advisable for the company to explore all possible options for resolving the dispute before resorting to legal action.
Given the complexity of international trademark and domain name laws, it's highly recommended for the company to consult with legal professionals who specialize in intellectual property rights, trademarks, and domain name disputes. They can provide tailored advice and guidance based on the specific circumstances of the case and help the company navigate this potentially challenging situation.
If the company is hesitant to give away the domain because it is well-established and heavily used, they should also consider conducting a thorough assessment of the potential impact on their business if they were to lose control of the domain. This could include evaluating the financial implications, customer outreach, and overall brand recognition associated with the domain name.
It may be beneficial for the company to engage in discussions with the organization claiming ownership of the trademark to understand their objectives and explore potential solutions. Open communication and transparency about the company's concerns and the value of the domain to their business could help in finding a mutually agreeable resolution.
In parallel, the company should take steps to protect their rights and mitigate potential risks related to the domain name. This might involve dоcumenting the history of the domain, gathering evidence of its usage, and reviewing any existing contracts or agreements related to the domain registration and administration.
Lastly, the company should consider seeking advice from professionals experienced in domain name disputes, particularly those with expertise in international intellectual property laws, to ensure that they pursue the most appropriate course of action to safeguard their interests.