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I currently have a classified ads domain in the .co.uk extension (say piggybank.co.uk). I am about to register the website and its name as a trademark.
There's also a website with the same name in the .com extension (say piggybank.com) which is currently on sale for several thousands USD.
Once I register the trademark, will I be able to legally get hold of the .com domain on the basis of trademark ownership (through ICANN or smth)?
It depends on some factors. First of them is: Is piggybank.com in the same branch as you are? If it is clearly something completely different, it might turn into a problem.
Then, is your name (now piggybank) some general word? Like Apple (Those lawyers have pulled some magic). If it is something less broad, something specific, that will increase your odds.
The age of that website is important, as well as the contents. Is it a blank 'this domain is still free' page, or is it an active website? If it is blank, it'll increase the chances you can get it.
I suggest that you register the name, and use that proof to contact the current owner of piggybank.com. Instead of draging this through some legal process, you can offer some reasonable amount.
It will save you some few hundreds in legal-fees, and the same goes for them.
You can contact ICANN about this and ask what the requirement are for them to 'take over' the domain and give it to you, but they'll try to stay away from this type of problems as much as they can, this always gets messy when it goes wrong.
piggybank), not a broad term. Their website is not blank either, a first impression is that it's some company's website, but after closer inspection you can tell that it's just a placeholder website faking a company website with stock images. I mean they have a 'We are hiring' link where you can also make an offer for the website.
Apr 3, 2014 at 13:40
I dont think you can register a trademark and then claim ownership of previously registered domain names, (though obviously you would need proper legal advice.)
Looking at the domain name dispute policy http://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-Resolution_Policy
A complainant in a UDRP proceeding must establish three elements to succeed:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The registrant does not have any rights or legitimate interests in the domain name; and
- The registrant registered the domain name and is using it in "bad faith".
You asked a specific question which I will address first.
Can you register a trademark then require an existing domain owner to give up that domain?
No. The registration predates your trademark and therefore cannot violate the law. In fact, within some areas, they could potentially have a claim against your trademark if they have been operating under that name for some period of time. However, since the site is just blank, it does not apply. Any complaint filed with ICANN, would result in no action.
Now for other topics.
Is cyber squatting illegal? Only in respect to existing copyright or trademark laws for any particular country using the reasonable man standard. ICANN can be queried to settle domain name disputes, however, if there is a name conflict, expect that the registration of the trademark and the locale and usage as well as general recognizability of the trademark to come into play. For example, a local trademark used as a .de domain name will not trump a .com site registered in the U.S. which has a reasonable claim to that name. The .de trademark will not trump the U.S. trademark in this case assuming that the .de trademark is not recognized outside of the country and it is reasonable that a U.S. registrant would not be aware of the prior use of the trademark in another country and the use of the trademark is clear within the U.S.
Where cyber squatting becomes illegal is with willful malicious intent to deny access to a trademark name, profit from a trademark name, mislead, conduct fraud, and any other action. But as stated earlier, the trademark must be recognized. Coke Cola, Deutsche Bank, Wells Fargo, Riggs Bank, and Harrods are all largely recognized. However, Smittys here in the U.S. is well known but not necessarily in the U.K. Only if Smittys is registered with willful intent does any use become illegal. If a store in London registers smittys.co.uk, for legitimate usage, it would not necessarily be illegal.
