Trademarks & Domain Names?

As some lawyers I know would say, it depends.

Short answer is yes if the domain owner does something that essentially rides
off the party's trademark. Things like, but not limited to, putting content with
competing services, selling it to them, etc.

Longer answer is...can't really say. Generally speaking, though, domain names
registered before its trademark namesake existed have good chances of being
protected against infringement claims.

As always, be ready to see a lawyer with real-world experience in this.

Probably best to talk to a trademark attorney on this one but I think a lot would depend on the market they were both in. Also a judge would probably weigh heavy on the fact that Company A had the domain name before company B's trademark.

The trademark infringement is a pain only if the concerned company decides to send out legal notices to the owners who own domain names registered as trademark. Recently I saw a news where Nike lost out the case when a guy started using the company's tagline. Apple got or rather seized 16 domains from a guy who used ipad in his domains. But would you believe that how many domains are still there with ipad in them?

There's a couple of issues and only a lawyer could decide this one. In order for a trademark to be valid, the company must use it. I once won a trademark dispute because the company had just trademarked the name and then never used it, but I don't know if registering the domain constitutes use or not. They are using the domain and have first use, but not the name, so only a lawyer could decide that one. The people who first registered it have a strong position. Personally, I would not go to the bother of trademarking a name if the domain was registered already.

It would also make a difference if both of the companies were in the same niche.

If this relates to the USA, then if the trademark is granted by the US patent and trademark office (uspto), it usually means nobody objected to the filing. ICANN's uniform domain name dispute resolution policy (udrp) almost always sides with the trademark owner. So if you have the validly registered trademark and it was granted by the USPTO, you're probably going to end up being the winner in any domain dispute.

I think the general legal argument is the company must be doing something that could likely cause confusion in the eyes of a customer and thus cause the business to lose customers and money.

Intent to use the trademark to cause confusion is also looked at. If you do it by accident its bad, but not so bad and you still have to prove you did by accident....

A while back Miracle grow sued another company just because the colours on their bottle of plant food were similar. Intent to confuse the customer was the basis of the legal case.

As such if you use the domain name for a different purpose then there is no trademark infringement even if the name is exactly the same. In the US you have Dove chocolate and Dove soap and moisturiser. Same name, yet no infringement because they are in different niches.

However if the company uses the name for lots of different fields then you may have a problem. For example if your domain was VirginHouseBuilding then Virgin.com might not like that you have that. That's because Virgin operates in a number of different areas and thus the VirginHouseBuilding could cause people to think that its opearated by Virgin.

Another example Utube.com used to sell rolled steel. Then youtube came along and utube now sells rolled steel AND promotes online movies..... but yet it still exists... so I suppose another determinent is how likely it is to actually affect your business....

Anyway, the above is just a general guideline. See a lawyer for a final answer.

Cheers

Max