This is a very complicated area of law - mostly because it presents uncharted waters - but there are basically two issues:
1, is there a violation of the cybersquatting laws by virtue of the later domain registration having been in bad faith for the purpose of either gaining money or harming the other business, OR
2, is there a trademark infringement? Trademark only applies if the later business is similar enough to the first that consumer confusion will result.
I guess I just always thought if someone had the domain first then the company just buys it...profit for the first person, I suppose.
That's what I thought too. The first person is absorbed into the second. And whatever was done or accomplished by them was your gain after the sale.
This falls into a recent story I heard. Apple is apparently going after all sorts of company using "pod" in their name or on the web. Not places that are similar or competing in the same area, but anyone using it. I think they attack is way too broad, and I actually think there should be penalties for companies over-aggressively trying to take copyright privledges.
triumph Wrote:This falls into a recent story I heard. Apple is apparently going after all sorts of company using "pod" in their name or on the web. Not places that are similar or competing in the same area, but anyone using it. I think they attack is way too broad, and I actually think there should be penalties for companies over-aggressively trying to take copyright privledges.
There's a storage company around here that will park a big metal box in your driveway for you to put stuff in and then they take it away until you want it again. The compnay calls these "Pods" and I see them all over town in big letters. That company ought to be going after Apple!
vicki2 Wrote:Oh, what a crafty idea, Andrew! It's a perfect solution particularly in this case, where the little guy is a bit bitter about the whole deal. Really creative way to pull off a double whammy!
I agree but also have to add something, many times when it comes to trade names and it is a David and Goliath situation it often comes down to the chess game that the attorneys play. Often the little guy loses because he or she just didn't have that shove-the-attorney-over-the-cliff money.
Domain name first would probably win.
It is pretty well established if you owned a domain name before a company existed or got rights to the name, that you can keep the name.
If you get it after the fact, that is where it becomes an issue, usually with the company ending up with the rights.
I'm going to paraphrase what one attorney has posted in another forum
because it's happened before. This is one exception to what is discussed
here.
Let's say you registered defg.com and put up PPC ads using your fave
PPC provider. You've earned good income from it.
Three months later, someone sells rubber bands, naming it defg. Then
after one year of selling it successfully under that name, they hop over
to the USPTO and file a registration to give constructive notice they've
established trademark rights to the term to sell rubber bands only.
Things go well for both the registrant who's got defg.com and the other
party who's still selling rubber bands. Both are going their merry ways.
But...
Six months later, the PPC ads for defg.com show those for selling rubber
bands. Someone tells the party selling defg rubber bands of such, and
they send a C&D letter to the registrant of defg.com to hand the domain
name to them or else.
This is because the party believes the registrant is perceived to be riding
on their established trademark rights. All the other party has to do is to
capture screenshots of what defg.com was showing that time (especially
the rubber band PPC ads) to prove the registrant has bad faith intent.
I apologize I don't exactly have the link to a specific case detailing more
about this. I'll look for it and post it here as soon as I can, but what I had
posted can at least give you an idea what to expect.
Interesting information Dave. I am not sure it would be that cut and dry. Or else people could just run ads themselves and steal domains. There is a point that even if you have prior use, if you go into a trademarked usage of the name you can still potentially get in trouble.
However see the long-standing legal battle between Apple Computers and Apple Records to see why this is not necessarily cut and dry. They had an agreement that Apple Computers would not get into music. Then they launched the iPod and iTunes. Apple Records believes this is a violation of their trademark, and Apple Computers disagrees.