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[David C.]

Hi

I would be very grateful if anyone could help me out with the following situation:

Suppose private person A registers the internet domain 'freanet.com' after determining that the name does not infringe upon any active trademark, but without any intention to develop a business with it. He/she immediately offers the domain for sale at $1mln (just to serve as an example..)

After 6 months B comes along and decides to register the name 'freanet' as a trademark for their business.

Would company B be able to claim the domain 'freanet.com' even though it was registered by A before B registered 'freanet' as a trademark?

Thanks in advance.

David C.

[Miguel A. Carpio]

Dear David:

I hope I could help you with your question. According to Wipo Rules, in case person B intents to claim such domain name, person A would have a prior right arguing the first date of register, this is, if the domain name was registered before the trademark, the holder of the domain name would have a better right to claim such trademark.
If this case goes to arbitration before a Wipo Panel, the arbitror, in my opinion, will decide that the domain name has a better right over the trademark.

I hope my opinion is clear enough and if you may have any question or comment please do not hesitate to contact me at your convenience.

Best Regards

Miguel A. Carpio

[M. Arthur Auslander]

Dear David C,

Without taking professional responsibility, my view is that domain names have separate lives and laws. The way I understand the law without research is that the trademark holder has little control over the domain name.
There may be things that  can be done but my gut says you can't do much to the domain holder unless you have a prior right and then the domain name has to infinge your registered mark.