Domainname & trademark question

[Zaitoni]

Hello,

I have registered a .com domainname, where I later found out the name was trademarked in 2010 and is still listed as 'intent-to-use'.

I just launched my website, it is a place where people can find jobs, (the vacancies are put by human resources from companies). My intention is not to make any money/profit out of this website. (Does this mean it is non-commercial? I dont know)

Can I still be using the name?

Thank you!

 

[justalayman]

If I am correct, an intent to use status is only good for 6 months although the time can be renewed upon request. How long ago was the ITU filed? Have there been any extensions granted?

My intention is not to make any money/profit out of this website. (Does this mean it is non-commercial? I dont know)

No, that does not make it a non-commercial use. It sounds likely to be a commercial use. The other choice is personal use and it doesn't sound like that is the intent.

Given the description of your use and the other entities use, I would not think there would be confusion (which is one determining factors of infringement) but it is impossible to say for certain. The biggest issue to be concerned with is if the other entity is a well funded company that can afford to toss money at lawyers to deal with this. Sometimes, even where there is no infringement, a big company will contest a use. Since they can often afford to fight it until the little guy goes broke, they win, even if they were not right in their position.

 

[Zaitoni]

If I am correct, an intent to use status is only good for 6 months although the time can be renewed upon request. How long ago was the ITU filed? Have there been any extensions granted?


No, that does not make it a non-commercial use. It sounds likely to be a commercial use. The other choice is personal use and it doesn't sound like that is the intent.

Given the description of your use and the other entities use, I would not think there would be confusion (which is one determining factors of infringement) but it is impossible to say for certain. The biggest issue to be concerned with is if the other entity is a well funded company that can afford to toss money at lawyers to deal with this. Sometimes, even where there is no infringement, a big company will contest a use. Since they can often afford to fight it until the little guy goes broke, they win, even if they were not right in their position.

Thank you for the reply!

The trademarked was filed in April 2010. He/they also got a second extension that was granted.

I wanted to use the domainname I registered (which is identical to their trademark) to provide (free) vacancies for people that are looking for a job. These vacancies are posted for free by companies who register at the website.

Thank you again for the reply!

 

[HuAi]

If I am correct, an intent to use status is only good for 6 months although the time can be renewed upon request. How long ago was the ITU filed? Have there been any extensions granted?


No, that does not make it a non-commercial use. It sounds likely to be a commercial use. The other choice is personal use and it doesn't sound like that is the intent.

Given the description of your use and the other entities use, I would not think there would be confusion (which is one determining factors of infringement) but it is impossible to say for certain. The biggest issue to be concerned with is if the other entity is a well funded company that can afford to toss money at lawyers to deal with this. Sometimes, even where there is no infringement, a big company will contest a use. Since they can often afford to fight it until the little guy goes broke, they win, even if they were not right in their position.

If the trademark holder files a domain name dispute with Verisign rather than through the courts he will be able to obtain the domain name regardless of what line of business you're in if the trademark is valid and identical, a lot quicker, and a lot cheaper too. ICANN's adjudication process does not consider the same factors as a court for a trademark dispute.

http://www.icann.org/en/help/dndr/udrp/policy

You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.