Domain and trademark

Hi, I'm a bit worried after seeing @mickyfu 's thread. Thing is I have a .com domain with me registered a couple of months ago and it is supposed to be my official company name with trademark too but I have not registered for a trademark yet because of the shortage of money. I plan to do it within a couple of months.

Now, I bet anyone can register a trademark on that name and search the domain for that name and can easily contact my registrar and try to get it back? Of course, they will easily win, right?

So, what should I do now?

And just for future reference after buying a domain name for a serious long-term business, it should be registered as a trademark just to avoid any hassle?

And what is the difference between trademark and LLC? (yes I google'd but it's still unclear for a noob like me)

I'm a bit noob at these things so I don't know all these important matters.

Hoping to get some advice here.

No, they can't simply just contact your registrar and get it back. They must file a UDRP with WIPO. And it costs $$$. Filing a UDRP with Czech's arbitration court used to be the cheapest alternative (~USD$550 [500 euros]) but they've increased their fees (maybe because of too much demand as many know it is the cheapest way to file a UDRP ). Read it here: http://www.circleid.com/posts/20180111_new_udrp_filing_fees_at_czech_arbitration_court/

If you're registering domain names with generic keywords, you don't have to worry about it. As long as it is not some company names (e.g: Estee Lauder, Gucci, Microsoft, Facebook, .etc.).

However, there are numerous cases of companies filing UDRP against individuals for generic keyword domain names. But if you or your lawyer knows how to defend it, you can win. There had been cases of this. For
example: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1048

Your chance of losing the case increases whenever you fulfil any of these 3 conditions:

1. Identical or Confusingly Similar
2. Rights or Legitimate Interests
3. Registered and Used in Bad Faith

For example, you register EsteLauder.com or EsteeLauder.org or EsteeLauder.io or have a similar sounding domain name and you've set up a website with an identical logo like the complainant's; parking the domain name and not using it (no legitimate interest) OR don't have a proper trademark for it (only worry about this if a company owns a trademark brings this point up); or registering the domain name and redirecting to related offers (e.g: a golf company's trademark and you redirect visitors visiting it to golf related products - it qualifies as using it in bad faith), trying to sell it back to the former owners or company who owns the trademark for any amount of money. For the last point, what makes Mickyfu's case different is because he registered the domain name before the trademark was filed. So he may have a chance to win, especially since there's a change in internet laws (that is why every outcome of lawsuits or cases will be used for future lawsuits - lawyers citing them, and so on). If you've read the above WIPO case (in fact, any lawsuits and cases), you will see how lawyers love citing and referencing archived cases.

As long as you do not fulfil the 3 conditions as stated above, your chance of winning the case is pretty secured.

Actually, there are a lot more I can dwell on. But as long as you don't fulfil that 3 conditions above (and don't register any company's trademarks), you're pretty safe.

Anyway, here's a good read: https://www.domainsherpa.com/generic-investing/

But yeah, don't worry about it. And say, if you DO get a UDRP and you don't wish to fight for it, you can do what most defendants do - ignore it. Then when WIPO decides in favour of the complainant, your registrar will automatically just transfer the domain name over to the complainant. You may pay a small penalty fee though. And I believe you could get banned if you get too many UDRP complaints and lost it (as it is usually against the domain registrar's TOS - infringing trademarks). Also, just look at the concluded outcomes of UDRP cases (http://www.wipo.int/newsletters-archive/en/domain_names.html) - notice how few there are - just one every several days!

Good luck!

Sophie said:

No, they can't simply just contact your registrar and get it back. They must file a UDRP with WIPO. And it costs $$$. Filing a UDRP with Czech's arbitration court used to be the cheapest alternative (~USD$550 [500 euros]) but they've increased their fees (maybe because of too much demand as many know it is the cheapest way to file a UDRP ). Read it here: http://www.circleid.com/posts/20180111_new_udrp_filing_fees_at_czech_arbitration_court/

If you're registering domain names with generic keywords, you don't have to worry about it. As long as it is not some company names (e.g: Estee Lauder, Gucci, Microsoft, Facebook, .etc.).

However, there are numerous cases of companies filing UDRP against individuals for generic keyword domain names. But if you or your lawyer knows how to defend it, you can win. There had been cases of this. For
example: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1048

Your chance of losing the case increases whenever you fulfil any of these 3 conditions:

1. Identical or Confusingly Similar
2. Rights or Legitimate Interests
3. Registered and Used in Bad Faith

For example, you register EsteLauder.com or Guccii.com or have a similar sounding domain name and you've set up a website with an identical logo like the complainant's; parking the domain name and not using it (no legitimate interest) OR don't have a proper trademark for it (only worry about this if a company owns a trademark brings this point up); or registering the domain name and redirecting to related offers (e.g: a golf company's trademark and you redirect visitors visiting it to golf related products - it qualifies as using it in bad faith), trying to sell it back to the former owners or company who owns the trademark for any amount of money. For the last point, what makes Mickyfu's case different is because he registered the domain name before the trademark was filed. So he may have a chance to win, especially since there's a change in internet laws (that is why every outcome of lawsuits or cases will be used for future lawsuits - lawyers citing them, and so on). If you've read the above WIPO case (in fact, any lawsuits and cases), you will see how lawyers love citing and referencing archived cases.

As long as you do not fulfil the 3 conditions as stated above, your chance of winning the case is pretty secured.

Actually, there are a lot more I can dwell on. But as long as you don't fulfil that 3 conditions above (and don't register any company's trademarks), you're pretty safe.

Anyway, here's a good read: https://www.domainsherpa.com/generic-investing/

But yeah, don't worry about it. And say, if you DO get a UDRP, you can do what most defendants do - ignore it. Then when WIPO decides in favour of the complainant, your registrar will automatically just transfer the domain name over to the complainant. You may pay a small penalty fee though. And I believe you could get banned if you get too many UDRP complaints and lost it (as it is usually against the domain registrar's TOS - infringing trademarks). Also, just look at the concluded outcomes of UDRP cases (http://www.wipo.int/newsletters-archive/en/domain_names.html) - notice how few there are - just one every several days!

Good luck!

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Thank you very much Sophie for the detailed explanation to clear my doubt.

And just for safety in advance, it is always good to immediately register a trademark for the domain we want to make a company for long-term online business, right?

Yeap. And in case if you do become a victim of a trademark infringement or cybersquatting, it will be your trump card. But pray that the infringer ain't from another country where your trademark rights may not be existent there. It is really a huuuuuge topic with many facets to look at, and I may have missed some areas despite answering the best I could, and that is why... consult a lawyer.

Sophie said:

Yeap. And in case if you do become a victim of a trademark infringement or cybersquatting, it will be your trump card. But pray that the infringer ain't from another country where your trademark rights may not be existent there. It is really a huuuuuge topic with many facets to look at, and I may have missed some areas despite answering the best I could, and that is why... consult a lawyer.

Click to expand...

So, suppose I am from country A where I have clearly filed for the trademark after buying the .com domain. Before registering for trademark, I researched and found there was no trademark with that name so I went ahead and did the trademark. Now, can anyone from country B file tradermark on that particularname that I have trademark for in my own country where my business is registered and I do business internationally?

If it is your company name, you are most likely safe. No worries.

just bob said:

If it is your company name, you are most likely safe. No worries.

Click to expand...

Yes but just like to know that if a trademark was done in one country, then can anyone from another country create any problem and win the situation, provided I did the trademark after searching in all countries and found 0 result?