Part of my domain appears to be a trademark

[compos]

Hello,

I have a certain site for several years and recently a trademark owner contacted me asking me to forward the domain to his account.
Example: if the trademark is "Wiser" then my site is Canadianwiser.com.
I had no idea that parts of my domain may be protected.
In order to resolve the issue I immediately made a 301 redirect to a new domain that will not be connected to that certain word.
However, the trademark owner still wants me to forward the old domain to his account.
In the way things are right now (no visitor ever sees the trademark word on my site or my domain, since it redirecting), does he has a case?

Thanks for your help

 

[FlyingRon]

What state are you in?

 

[quincy]

Hello,

I have a certain site for several years and recently a trademark owner contacted me asking me to forward the domain to his account.
Example: if the trademark is "Wiser" then my site is Canadianwiser.com.
I had no idea that parts of my domain may be protected.
In order to resolve the issue I immediately made a 301 redirect to a new domain that will not be connected to that certain word.
However, the trademark owner still wants me to forward the old domain to his account.
In the way things are right now (no visitor ever sees the trademark word on my site or my domain, since it redirecting), does he has a case?

Thanks for your help

The state or country name is important.

The owner of "Wiser" could support a claim to "Canadianwiser," this especially if "Wiser" is a recognized trademark. If "Wiser" is a word like "Pepsi," for example, then Pepsi could wrest from you a "Canadianpepsi" domain name.

Actual names and all facts, in other words, matter. Your state or country name are two of the facts that matter.

 

[compos]

I'm based in Israel.

Many thanks for your help

 

[quincy]

Thank you for providing the name of your country, compos. This site handles U.S. law questions only.

Trademark laws are different in different countries. One major difference is with the registration of trademarks. In the U.S., trademarks do not need to be registered to gain rights in a mark. Trademark rights (generally) go to the first to use a mark in commerce. In many other countries, on the other hand, it will be the first to register the mark who will own the mark.

Whether the "Wiser" trademark holder can acquire your "Canadianwiser" domain name, or prevent you from using the name to identify your goods/services, will depend on the laws in Israel. If "Wiser" is registered as a trademark in Israel and the owner markets its goods/services in Israel, there is a greater chance that you could lose the name should your use be challenged. The actual names that are in question here matter. How well-known the names are matter. How long the names have been in use matter. In law, all facts matter.

To determine better your risks and your rights, I suggest you consult with an IP attorney in your area of the world. You can visit the following World Intellectual Property Organization website for information specific to Israel. Good luck.

http://www.wipo.int/directory/en/urls.jsp