If someone has a domain name, but has not trademarked it, can I trademark that domain name and then seize the domain name?

Not exactly, but maybe in limited circumstances. That is more of a function of the way the question is asked than the way trademarks and domain names intersect.

Here’s a really crude explanation. There are many different variables and nuances here, but generally, there are two factors: (1) how trademark rights are acquired and (2) how the domain name is being used.

1. Trademark Rights

Understand the difference between a trademark registration and how trademark rights arise.

Trademark rights arise from actual use in commerce when customers identify a particular name as being the source of goods or services. (Technically, a mark for identifying a source of services is a service mark.)

When people use “trademark” as a transitive verb or say “get a trademark,” often they mean “register a trademark” with the US Patent and Trademark Office.

You can register a trademark based on your actual use of a name to offer goods or services, or you can apply for an intent to use trademark registration for a name that you have a bona fide intention of using.

If those names happen to be the same as the domain name for a site selling those goods, then there is a chance the Trademark Examiner assigned to your application may decline to register it. The owner of the domain name may interfere or protest, or the examining attorney may decline to register it based on her own research. The applicant has a chance to submit evidence why the mark should be registered and the public will not be confused.

If the applicant succeeds in getting a trademark registration, it is tremendously powerful. The reality in 2010 is that a lot of websites will nearly automatically honor a trademark registration as presumptively valid in applying their Terms of Use to disputes. I have heard anecdotally that some websites treat intent to use applications with nearly the same deference.

That is useful, and will likely build up the mark’s portfolio and strength over time.  However, it will not automatically get a transfer of the domain name.

2.  How the domain name is used

If the domain name is not being used at all, or is not being used as a name that the public equates as the source of goods and services, then the name hasn’t acquired trademark rights. If the domain name is being used in bad faith (and by the way, fair, non-commercial use is not bad faith), a registered trademark owner may be able to use ICAAN arbitration to acquire it.

But, if there is a website hosted at the domain name, and the public associates the name of the business there with goods and services (e.g., Zappos.com, or any company that the public refers to as “___.com“), then the business has trademark rights in the name, and the domain name can be an extension of that.

3.  Conflicting marks and domain names

Over time, trademark rights and registrations can strengthen or weaken. Trademark registrations must be maintained every few years with proof showing they are still valid. Trademarks can encroach on other marks and eventually invalidate weaker marks if the public identifies one as the source of a particular product over another.  That is why companies may at times appear to be acting like jerks in policing their trademarks in seemingly ridiculous ways – it’s use it or lose it.

So a trademark registration will not likely lead directly in all cases to the right to seize the domain name, but it can begin to encroach on a weak domain name over time. Trademark registrations certainly give the owner a leg up in resolving disputes in informal social media marketing campaigns, whereas a domain name registration generally counts for very little. Over time, a strong enough portfolio of use may give the trademark registrant enough leverage to box out the domain name holder from doing anything more useful with the domain name, but it could be a long haul.

Source: https://www.quora.com/If-someone-has-a-domain-name-but-has-not-trademarked-it-can-I-trademark-that-domain-name-and-then-seize-the-domain-name



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