Domain Registration Pre-Dating a TM

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0062.html

John Berryhill, a highly regarded domain attorney, was kind enough to reference this important UDRP case that may impact domain owners. The facts of the case are:

1) Original registrant sold CreditKeeper.com, a name that he registered in 2001.
2) UDRP was filed by HSBC Finance Corporation, as they have two registered trademarks for “Credit Keeper,” one granted in 2004 and the other in 2005, both of which were filed and approved after the domain name was created.
3) Respondant argued that he should be allowed to keep the name as it was registered prior to the TM, and those rights of the original registrant should be passed to him.

Attorney Berryhill argued that the new domain owner acquired all rights of the domain name, including the important rights that existed because the registration pre-dated the trademark approvals:

The Respondent contends that it acquired all rights to the domain name under a certain

Elliot Silver
Elliot Silver
About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has closed eight figures in deals. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest. Reach out to Elliot: Twitter | Facebook | LinkedIn

LEAVE A REPLY

Please enter your comment!
Please enter your name here

Recent Posts

Spaceship SellerHub to Launch for All on April 29

2
Last week, Spaceship's new SellerHub opened for third party beta testing. Participants were limited to larger portfolio operators. Yesterday, CEO Richard Kirkendall announced the...

Atom.com Brings Expert Review Process in House

1
For as long as I’ve known the platform, Atom.com has relied on an “Expert Review Process” to evaluate domain names submitted by prospective sellers....

Google Change Should Reinforce .com Dominance

2
Google has operated its search engine on many different domain names. Of course, Google.com is the company’s primary domain name and the one that...

Don’t Delay Registering Trending Domain Names

4
I regularly see people discuss the possibility of domain registrar front running. In fact, I've written about this topic before. By and large, I...

ICA Webinar on Transfer Lock Changes

4
Transfer lock policies can differ at each domain registrar. Depending on the situation and domain name status, some locks are required by ICANN and...