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[spook]

Hello people....


What if a domain predates the press release announcing a new TV show by 1 month,
it predates the trademark application by 6 months,
its predates the tv show's first broadcast by almost a year
Now the Domain name and Tv show's name are identical...

The TV show is very famous now.

however, the stated intended use of the domain was somewhat different ..

then a lawyer called and said the domain registrant was certainly infrindging on their trademark , Wich at the time is NOT fully registerd .. ..he expressed on the phone that they would the domain owner to hand over the domain free of charge and that they do not intend on purchasing it.

the domain then owner put up a disclaimer stated "no associatio woth the show and that his site is coming soon.....

the domain owner expressed the domain is not for sale and he intends on using it once the developmnt is completed ...  

how can the domain owner compete with this media giant ?

is it even possible ?
is this an attempt of reverse domain hyjacking ?

can he use it as planned ?
what if the plan is the same as the tv show ?
what if the plan is not the same as the tv show ?
what if the plan is somewhat similar and could cause confusion with the tv show ?

[JSonnabend]

Your question has a two part answer.  First, it sounds like the domain was registered in good faith, at least as far as the show's owners' rights are concerned.  Thus, the UDRP/ACPA should not operate against you.

Second, domain name registration and use, by itself, does not amount to trademark use.  As a result, as domain registrant, you may not have trademark rights in the domain name.  At the same time, the show's owners' likely do have trademark rights already -- even without a registration -- in the show's name.  If your use of the domain name became a trademark use, and that use was likely to cause confusion with the show owners' mark, then they might be able to enjoin you from such use.

You might consider speaking directly to a lawyer about this.

- Jeff

[Isaac]

The facts on their face don't suggest bad faith, but as a person who sees black helicopters and wears a tin foil hat,  I wonder what date of first usage might appear in the trademark application and if there were any activities tipping off the intention with regard to the TV show that occurred prior to the press release.

I'd  agree with Jeff about speaking to a lawyer.  It is not all that hard to create indications of bad faith in the eyes of at least some arbitrators even through activity that occurs after the first complaint by the trademark holder.   You want to avoid that if possible.

[spook]

Thanks for the Interesting comments on this hypothetical subject....( Re: domain predates tv show/trademark app )

Lets assume i checked the application... and found that its based on "Proposed Use"

What does that mean in this situation ?
I think it means something good.. but what ?
with my experience i cannot pinpoint what that means...

Also.. their trademark application has been opposed by another entity, this other entity claims that they offered the exact same wares and services prior to te "giant" 's date of proposed use on their wares and services..  
there has also been "3 extentions of time granted"...

I think the first " date "  of proposed use would be the first press release announcing the show. There were no previously publically announced "activities or  tipping off the intention with regard to the TV show that occurred prior to the press release... accross the country.

The tv show.. It simply did not exist, the tv show's existance was was created by them after a plan it was created first by the domain registrant, who also stated he/she/it plan for the domain online, wich was somewhat different.  Better in fact.

Can the domain registrant sleep easy?
even if he/she/it still has no precise legal road to follow.

THE QUESTION :
is there some sort of "simple"  "clear" step by step plan for this situation,  or some guidelines to follow so there's no legal trouble down the road.. ? some rules to follow.. ?
to make it all work, for the registrant... and whoever helps he/she/it..

Or should he/she/it also wear a tin hat and watch out for black helicopters ?

or just stay away from their wares and services...

or should ther be a fight..  they are now.. along with their TV show, operating a website that is similar to the domain registrant's statement  at the time of registration of the domain.

But its ..  its like David vs Goliath..  
Fear disabled to domain temporarily.

"Landrue   -  Guide us"

who's interested ?

[JSonnabend]

Nothing in your second post changes the advice I gave earlier.   It seems to me you're looking to get some piece of mind here for your actions.  If so, you're looking in the wrong place -- only a lawyer, in a one-on-one setting, can give you proper legal counsel.

- Jeff