Possible agro

retired_member11 · Apr 20, 2006

When buying a .co.uk domain name from the previous owner and where that owner was the original first registrant going back to the late 1990's, do IP rights to the domain as a mark extend to the new owner from the original 1990's registration date or only from the more recent purchase date?

For example, if another party has applied to register a trademark that is the same as the domain (minus the 'www' prefix and the '.co.uk' extension) on a date after the original domain registration date in the late 1990's but before the domain purchase date would that application present a problem for the new domain owner in general terms? The domain isn't being used for anything, just Sedo parking without keywords being set other than 'webarchive'/'portal'.

What da ya think?

bb99 · Apr 20, 2006

What was the domain used for by the original registrant - has it always been a parking page?

Also, the current owner may want to object to the current trademark application (although I've no idea how that sort of stuff works, but I'm led to believe that the TM people are very nice on the telephone).

retired_member11 · Apr 20, 2006

It was being used for a company website but it was a business in a market different from the commercial activities of the trademark applicant. There was no overlap of commercial or IP interests.

I'm hoping that my rights upon purchase would extend back to a point before theTM application date thus avoiding any possible DRS/ legal agro.

bb99 · Apr 20, 2006

I don't think that the IP rights etc would pass automatically.

I think of it like this:

a) John buys a bread machine and a shop from Mr Bun the baker. He does not buy the business, just the shop and the bread machine. He trades as "John's Bakers" instead of "Mr Bun's". In this case, John has bought some assets and started a new business.

b) John buys the trade and assets of the bakery business from Mr Bun. This includes the bread machine, the shop and all goodwill, IP etc in the business. He continues to trade as "Mr Bun's".

There's a clear disctinction between what is being sold (ie a bunch of stuff V a business that includes a bunch of stuff).

If the domain's sale is accompanied by some documentation to make it clear that the new owner is buying the domain name along with IP rights and maybe some other stuff then perhaps this will be sufficient. As part of this, the old owner will have to give up rights to both the domain name and the use of the name in general.

However I'm not Perry Mason so don't count on anything I've said!

accelerator · Apr 20, 2006

Argonaut

* I would not class myself as an expert and this is certainly not professional advice *

My current knowledge is that buying a domain name does not confer upon you any intellectual property rights over the term involved. Trademarks are what confers intellectual property rights, so if you don't own a trademark on the term relating to the domain name you have registered, yet someone else does, then they are the only ones that have intellectual property rights over that name. If they suddenly decided that they wanted to use your domain name, I believe they would be in a far stronger position than you as far as Nominet DRS is concerned (if we're talking about a .co.uk that is).

I believe that there are cases where Nominet has given precedence to the Trademark owner, even though the domain had been used by the registrant prior to the trademark being taken out.

At the very least you should make sure that any use you put the domain name to does not infringe upon any activities covered by the other party's trademark. Use the domain for another activity and you might have some IP claim through "valid use".

Anyone else care to comment?

Rgds

Accelerator

bb99 · Apr 20, 2006

accelerator said:
Anyone else care to comment?

Aye - these trademark holders are a downright menace...

accelerator · Apr 20, 2006

Please domainers correct me if I'm wrong, but I believe:

- A trademark holder will have a lot of weight to his claim on a .co.uk domain, even if the other party registered the domain before the trademark holder got his trademark.

- If you have a domain that is "trademarkable", i.e. non-generic, and no trademark has been taken out on the term yet, and you think the domain name is sufficiently valuable, then you should either be watching the trademark applications so if someone else tries to trademark you can object, or take a trademark out yourself to eliminate any risk.

Rgds

Accelerator