What is the relationship between domain name and trademark rights?

Question

Domain name market

Some of my friends have a company website. The domain was registered over ten years ago. The other day, representatives of a certain organization contacted them by phone and offered to discuss the transfer of domain administration to them, citing the fact that they are the owners of a trademark that coincides with the domain name. Those who applied were asked to write an official request to the company with all the justifications and seals of the company, but for now all the data is not yet available - you need to find out such moments in order to imagine what to do next in this or that case.
So given:the organization has the rights to administer the name.ru domain. Some people want to take the domain, citing the fact that they are the owner of the “Name” or “Name” trademark. The organization does not want to give away the domain, because the site was promoted, many customers know it, and it is really used daily, and not just hanging on the net.
Here are the questions:
1. If the trademark was registered later than this domain was registered? What if earlier? The RIPN regulation only mentions the priority of registration by the trademark owner, that is, if two applications for registration are filed simultaneously, preference will be given to the one filed by the owner of a consonant trademark.
2. If the owner of the trademark still has some rights to the domain, can we appeal this case if the trademark is Cyrillic "Name" and the domain is in Latin - name.ru?
3. If the opponent's trademark sounds like “name”, is it possible to save the domain by registering your own trademark “name.ru”, that is, corresponding to the spelling of the domain name?

Answer 1

No one forbids registering trademarks of the same name. The main thing is that they were in different categories. But this is only if they try to solve the problem through the courts. Most likely, this is one of those cases when a client is taken in fear

Answer 2

You need to pay attention to the class in which the trademark is registered. If the types of activity for which the TM was registered differ from the subject of the site on this domain, then you can safely send them.

Answer 3

1) They have rights to a domain only if the domain is registered later than the trademark.
+ Legal commentary

A domain name can also be taken away if the trademark registration date is earlier than the domain name registration, but for this you still have to somehow break the law. If your thoughts are really good faith and do not violate the rights of the trademark owner, then the domain name will not be taken away from you.

kolosov.info/yuridicheskaya-konsultaciya/domennoe-imya-i-tovarnyy-znak

Disputes about domain names should be considered with a mandatory assessment of the priority in domain name registration.

blog.liga.net/user/selivanov/article/3891.aspx

Answer 4

Google on the topic “domain degree of confusion with TK” (TK is a trademark).
See, for example, this one .

Answer 5

The trademark must be registered before the domain. Otherwise, I believe they registered the mark with the domain, and you can approach them with an offer to transfer to you the trademark that they licked off the domain name.

Answer 6

If the trademark is still registered before the domain, and the markets in which the company and their trademark operate are different, then you can safely put pressure on the absence of any connection.

Answer 7

The trademark must be registered before. then the name is entered into the trademark depository - and no one except you will be able to register a domain with the corresponding name. This is for your future, of course.

Answer 8

got into a situation here, registered several domain names in the new .help and .online zones of one very large bank sb ......, registered them on https://uniregistry.com 1 of them transferred to the ru center (changed the registrar).
domain names were not used... (no website).
Have I broken the law? registered, then I get them from the registrar on the caimans ...?

Answer 9

I read the topic, it became a little clearer after reading the article -
www.registerdomain.ru/articles/23.html
But still, who can briefly point out the points:
- If the domain name is registered much earlier than TM (TM is registered to select the domain name)?
- If goods and services are not sold on a site with a domain name, but this is an information portal (possibly contextual advertising)?