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[PROXUS]

I have trademark for ex. "Euro boxes".
What is my legal right to domain name euroboxes.com registered previously by someone else?

Can I tell this person to stop using this domain because right now it will include my trademarked sentence?

Thank for any help in that matter

[Anon]

First, let me make clear that I am NOT an expert in Trademark matters.  But here's my best guess...

If I understand correctly, someone else registered the domain prior to your first use of the trademark.   If so, then I'd guess that your options are limited to preventing the current registrant from using the domain in a way that infringes your trademark.

I think the real question is, now that you have a trademark, what would be your options if the current registrant sells (or offers to sell) the domain name to another.  Anyone?  Anyone??

[Isaac]

In a situation where the domain was registered prior to the first use of the trademark which contains the tradename, the domain holder has no legal right to the domain name based on registering a trademark.

That is not to say that some of the dispute resolution procedure of name registrars might not allow yanking the name, but a domain holder willing to pursue the situation in court can probably keep the domain name.

[JSonnabend]

I think Isaac may have overstated the position.  What rights the trademark holder has against the domain registrant depends in large part on how the domain name is used.  Right now, this whole area of law is very immature and changes day-to-day.  New theories are constantly being proffered, and arbitration panels are very receptive to arguments made by trademark holders, even novel ones.

My advice is not to give up hope and to hire an attorney if you're serious about wresting the domain from the owner.

- Jeff

[Isaac]

Okay.  Let me state my opinion with a little more care.  I understand
that some of the dispute resolution procedures including some involving arbitration
can result in the domain holder losing his domain name even when he
registers the name before a trademark holder ever uses his mark,
however I'm not aware of any US *court* taking such an action.  Under
US law, such a domain holder would unequivocably not be a cybersquatter.

That does not mean that the domain holder might not later engage
in trademark infringing activity, but simply registering a domain
name does not in and of itself provide a right to a previously
owned and registered domain name IMO.

That said, my statement that there was no legal basis for removing the
trademark was wrong.  It did not include whatever agreement to
submit to arbitration the domain holder is bound to because during
the registration process.

[JSonnabend]

Isaac -

I agree that under the facts, the user *might* not be a cybersquatter.  It is unclear from the OP whether the trademark use preceded the domain registration.  Specifically, I'm not clear what the OP meant by "registered previously" -- previous to what?

Also, my belief is that application of section 4(b)(iv) of the UDRP may provide relief in many situations where sections (i) - (iii) would not.  This may be one of them.

Finally, depending on how the domain is being used, plain-old tm law might provide the necessary tools to wrest the domain from the registrant.

- Jeff

[Isaac]

I see where you're coming from now Jeff, and you're right.  The OP left open the question of whether registration was prior to use of the trademark, although IMO some of the wording suggests that the OP has the short end of the stick.  

The follow up post assumed an answer to that question, and I tried to be careful to include the assumed limitation in my follow up posts.  My posts should not be considered responsive to the initial question.

It might also serve well to note that I do not practice in this area and Jeff's comments should be given far greater weight than mine.

That said, I have seen people post here asking if they could take away a domain by registering a trademark.  Even ignoring the point that registration without use does not create trademark rights, it should be noted that attempts to do obtain a domain name in such a fashion might be met with an action for reverse hi-jacking.  

Also as Jeff suggests, UDRP allows calling people squatters who might not be labelled so under 15 USC 1125(d) (ACPA).  It's my opinion that a domain name holder who falls into such a position has a fairly good chance of keeping his domain if he pursues a court action rather than allowing the arbitrator to decide his fate.

[Anon]

I'll take the blame for introducing the assumption regarding the phrase "registered previously" found in the original post.  I was hoping that PROXUS would jump back in to clarify.

My interest in this discussion is that I also hold a trademark that corresponds to a ".com" domain name, where the domain name was registered prior to my first use of the mark.  (I am the registrant of the ".net" and ".us" domains corresponding to my trademark.)  In my case, the registrant of the ".com" domain name does not, and never has, maintained any sort of website (not even a parked site) for the domain.  In fact, he doesn't use the domain for any genuine purpose, not even as an email address.  Rather, the site is just one among several in his "portfolio" of domain names.  And yes, I have spoken with the registrant, and he was very careful NOT to offer it for sale.  However, from what he didn't say, it's safe to assume that he that he would sell, but only for much more than I would be willing to pay.

I have considered attempting to yank the name through one of the dispute resolution procedures.  But at least for now, since I think my chances of success are slim, I've decided to devote my resources elsewhere.  Anyone disagree that my chances are slim?

Although I don't think I have much chance to yank the domain from the current registrant, I hope that I might have a better chance to yank it from whoever eventually buys, since the date of transfer would be after my first use of the trademark.  Any thoughts on this approach?

[Isaac]

It might be worthwhile to read some dispute resolution cases to get
a feel for what kinds of fact situations come out favorably for
the domain holder.  Or maybe just consult an expert who already
knows the field.

But the cases I've read are all over the place.  Some arbitrators
seem to think that domain name speculation is a legitimate business
activity while others consider such businesspeople to be squatters.

One danger with waiting is that the domain name might end up in the
hands of someone with a legitimate trademark interest.  In that case
you'd have no possibility of yanking the domain.

[JSonnabend]

But the cases I've read are all over the place.

They are all over the place, and none has binding effect on any other (at least not formally, anyway).  It's kind of the wild-west out there.