Ask HN: Can a company seize my domain bought years prior to it filing for a TM? | Hacker News Reader

Ask HN: Can a company seize my domain bought years prior to it filing for a TM?

10 pointsschappim6 comments

My company sells a once open-sourced product in Australia, let's call it the "Touchy Touchy" (not real name).

This product was made in collaboration with one of our suppliers and at this time open sourced.

We purchased the domain touchytouchyaustralia.com.au and sold this product online.

Some years later, the partners of the "Touchy Touchy" registered the trademark, they also stopped making their product open source.

We have received a nastygram stating that we need to transfer the touchytouchyaustralia.com.au domain to them. What rights do we have here?

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IANAL, maybe there is some way to revoke the trademark http://manuals.ipaustralia.gov.au/trademarks/Part_62.pdf

Have you agreed any IP rights transfer with the supplier before? If yes then maybe these could be used to bounce them or make a settlement.

No agreements have been made.

I was involved in a situation were two partners were also fighting over a domain and copyright involved with a project. It took more than a year, and lots of nasty letters back and forth, and a lot of money for a lawyer.

In the end we settled on each partner licensing their contributions to the other party, so that both could continue with the project. We didn't get the domain, which is a bit sad since the other party abandoned the project, so there's now an abandoned page on the old domain.

However, it turns out that domains don't matter as much as people think, and people quickly realised that the project is now continuing at a new domain.

If your domain predates the trademark, and you're using the domain and not squatting on an empty page then I don't see why you would be obligated to give it up. If they just sent a strongly worded letter/email I'd be tempted to just ignore it really. I am however not a lawyer and you might want to consult one.

You might be interested in reading about Nissan.com, where the owner has had an ongoing struggling with the Nissan Motor Company over the domain name.

Thanks for your 2c Mark. Yeah Nissan Vs Nissan came to mind when the nastygram was received. Unfortunately I’m dealing with Australian law.

Best thing to do is talk to a lawyer in trademark law that operates in your country.

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