If we register our startup name as a trademark, can we also get the domain name held by somebody else?

Trademark Agent

Hello,
My name is Krasimira Kadieva - an European trademark and design attorney and it is my pleasure to answer your question. I hope that you will find the information below useful.

How proprietors of trademarks can protect their rights and interests when there is a registered identical or similar to the trademark domain name? There are several ways by which the dispute can be resolved if there is a conflict between a trademark and a domain name.

The fastest and most efficient way is reaching an agreement between the proprietor of the trademark and the owner of the domain name for redemption of the disputed domain name. In this case, the parties resolve the dispute without seeking the option to solve it in a judicial or administrative way. The second way is the judicial resolution of the dispute, which in comparison with the other possible methods is a long and expensive process.
The alternative of both methods is an administrative procedure, which in most cases is preferred by the parties in the resolution of such kind of disputes in the fields .com, .net, .org, .aero, .asia, .biz , .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel.

In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN) adopted an Uniform Domain Name Dispute Resolution Policy as well as Rules for Uniform Domain Name Dispute Resolution Policy.The following specially accredited organizations for alternative domain names dispute resolution resolve disputes: the World Intellectual Property Organization (WIPO); The National Arbitration Forum (NAF) – Minneapolis; the Asian Domain Name Dispute Resolution Center (ADNDRC) – Hong Kong; the Czech Arbitration Court (CAC) – Prague and the Arab Center for Dispute Resolution (ACDR) – Amman.

As you are based in Hong Kong the dispute can be resolved by the Asian Domain Name Dispute Resolution Center (ADNDRC) in Hong Kong.

The complainant who files a claim against the proprietor of a domain name shall prove in the administrative proceeding the cumulative presence of the following three prerequisites:

– Why the domain name is identical or confusingly similar to the trademark in which the complainant has rights;

– Why the proprietor of the domain name has no rights or legitimate interests in respect of the domain name;

– Why it should be considered that the disputed domain name has been registered and is being used in bad faith.

The domain name has been registered and is being used in bad faith:

– When it has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the proprietor of the trademark or service mark or to a competitor of that complainant;

– When it has been registered in order to prevent the proprietor of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the proprietor of the domain name has engaged in a pattern of such conduct; or

– When the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or

– When by using the domain name, the proprietor of the domain name has intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

I have written an article on this topic that can be read at: http://kadievaip.com/en/2016/04/domain-name-dispute-resolution/

With best regards,
Krasimira Kadieva

Trademark Agent

You can't use your trademark to go after someone who registered the domain name before you started using the trademark (or before you registered the trademark), but your registered trademark will allow you to successfully go after ANYONE other than the original owner of the domain name. This way, you limit the effective market for the cybersquatter to just one person, yourself. We've used this strategy multiple times, and if nothing else, it adds strength to the negotiating position.

Trademark Attorney

No, registering a trademark won't help you with getting that domain name.
In order to succeed in a UDRP, one of the things you need to prove is that the domain name was registered and used in bad faith (e.g. to steal your traffic, impersonate you, extort a high price from you). That's going to be impossible to establish if the domain name was registered before you started using your name and before you registered your trademark.
Registering a TM and trying to use it to take over an already registered domain name that hasn't been registered in bad faith is called reverse domain name hijacking. It's a common question though.
Best to email the domain name owner and see if they're willing to sell it.

IP Consultant

You should not worry about the fact that another company registered the .com domain. You should be able to register your starpup'sname.com.hk Try it. Regards