Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[spacemonkey]

Consider this scenario:

Person A buys the domain "abc.com" and uses it for a commercial enterprise.
Then company B trademarked "abc" a year later, claiming they've used "abc" for four years without trademark (as their company tag line).
Company B then goes to WIPO to force transfer, loses dispute.
Person A to protect himself, closes "abc.com" during domain dispute.
Can person A reopen "abc.com" without risk of trademark infringement now that dispute is over and he won? If not, can person A use abc.com for a non-commercial site (ie blog) without risk of trademark infringement?

[JSonnabend]

I think the whole question can be boiled down to: if A reopens the website, can B still sue for infringement successfully?  The answer is yes (not that B wins necessarily, but that B could still possibly win a suit).  Whether or not the UDRP result is helpful to A depends on the reasoning of the decision.

- Jeff

[spacemonkey]

Thank you for the reply. Does the answer hold true if site abc.com was reopened noncommercially? ie - as just a blog.

[artchain]

I think Jeff's point is that, despite having won the dispute before WIPO, it is still possible for you to be successfully sued for trademark infringement.

Whether or not your use is infringing is a separate question.  And yes, in some cases non-commercial use may still be an infringement.

Even if your use is NOT infringing, it is still possible for the trademark owner to sue you, and it may be costly to defend.

So, if you plan on using the domain, it would be best for you to schedule a consultation with an IP attorney in your area.

[JSonnabend]

Thank you for the reply. Does the answer hold true if site abc.com was reopened noncommercially? ie - as just a blog.

Less likely, but not out of the question.

- Jeff