Losing a domain name to a trademark

[ChrisjChrisj]

This may have already been discussed here, I searched a bit - didn't find it.

I read somewhere that Groupon wasn't the original owner of the name groupon, so instead of buying the domain they trademarked the name and made the original domain-name-owner in violation using the name.

Can someone elaborate on this?

Did the original owner have a working website, or just held the name? Is everyone who doesn't trademark their domian name vunerable to this type of name snatching?

[webcosmo]

when they started somebody in England had that domain without any website. they contacted him to buy, he wont sell.
later on they had trademark for the name groupon for usa and in europe. this made the guy sell it for $250,000 in 2009.

[Mikl]

I don't know the background to this, but I can't see how you can force someone to sell (or give up) a domain name simply because it is the same as your trademarked name. Contrary to popular opinion, owning a trademark does not give you a monopoly on using the words or names that happen to be in the trademark. And it certainly doesn't allow you to enforce any rights retrospectively.

Where you can take action is if a domain owner is deliberately using the name to mislead the public, and especially if they are trying to pass themselves of as another business. Is there any suggestion that that was the case here? Without knowing more of the facts, it's impossible to know the answer.

Mike

[jestep]

I don't know the background to this, but I can't see how you can force someone to sell (or give up) a domain name simply because it is the same as your trademarked name. Contrary to popular opinion, owning a trademark does not give you a monopoly on using the words or names that happen to be in the trademark. And it certainly doesn't allow you to enforce any rights retrospectively.

Where you can take action is if a domain owner is deliberately using the name to mislead the public, and especially if they are trying to pass themselves of as another business. Is there any suggestion that that was the case here? Without knowing more of the facts, it's impossible to know the answer.

Mike

This is what I was thinking as well. I know google didn't have right to the gmail domain when they started the service which is why it was originally gmail.google.com. I can't imagine a new trademark owner being able to retroactively take control of a piece of online property just because the trademark wasn't registered or the domain wasn't being used. Seems like there would be a massive counter industry to rip off small website owners if this was possible.

[Ted S]

Simply put you can't claim a trademark retroactively (unless you're arguing you had used the mark before filing it which is also noted in the mark) but there are ways domain owners can come under fire -- mostly in changing their purpose or selling the name.

For example, if you owned XXXXYYYY.com and were selling flowers online for a few years and I decided I liked XXXXYYYY as a social network, got the trademark, it exploded and you decided to make a social network, you'd lose a lot of your position from prior ownership unless you could prove this had been a plan, was already in motion, etc.

Of course being sued, even when you're in a defensible position doesn't mean you'll win. Many companies simply opt to take a settlement or back off because it's worth the cost to establish their rights... That's why you get a lot of grassroots movements and advocacy groups involved in IP.

[Green Moon]

For example, if you owned XXXXYYYY.com and were selling flowers online for a few years and I decided I liked XXXXYYYY as a social network, got the trademark, it exploded and you decided to make a social network, you'd lose a lot of your position from prior ownership unless you could prove this had been a plan, was already in motion, etc.

I wou;d say it even more emphatically - you do not have any rights to infringe a trademark just because you bought a domain before the mark was registered. In the above example, you would be free to use the domain to continue selling flowers because you had acquired a trademark by use (rather than registration, but that's OK). Trying to use it in any other way would have to be done in a manner that didn't infringe on the other owner's mark for use as a social network. What's more, at least in the United States, if the mark became "famous" for its second use as a social network, you might be limited from using it for ANY use other than the one you were using for before the mark became famous.

Applying those concepts to the question the OP asked, if someone buys a domain and doesn't use it at all, they have NO trademarks rights, so any eventual use must not violate someone else's trademark. If another entity uses a mark in a way that qualifies it as famous, you may own the URL but can do nothing with it without violating the trademark rights of the famous mark.

That still doesn't mean that you can't own the mark, but your only two choices are to leave it dormant (even parking probably infringes the famous mark) or sell it to the owner of the famous mark.

[Dave Zan]

This may have already been discussed here, I searched a bit - didn't find it.

I read somewhere that Groupon wasn't the original owner of the name groupon, so instead of buying the domain they trademarked the name and made the original domain-name-owner in violation using the name.

Can someone elaborate on this?

Did the original owner have a working website, or just held the name? Is everyone who doesn't trademark their domian name vunerable to this type of name snatching?

http://mixergy.com/domain-business-tip/

[felgall]

Where there are two businesses using the same name in completely different areas in different countries then there may not be any basis for any conflict between them. If one then decides to expand into the area that the other is in then they can either reach an agreement between themselves or end up in court.

I believe in the case between Apple in the US (computers) and Apple in the UK (music) that when the US company wanted to expand into music that they negotiated an agreement between the companies. As the agreement was negotiated outside of the courts, no one apart from those involved know how much the Beatles (who established Apple in the UK back in the 1960s) receive each time someone buys music through the Apple company eatablished in the US in the 1970s.

[Green Moon]

http://mixergy.com/domain-business-tip/

Dave, thanks for the link!