Domain registered during TM "Pending" phase

[shags38]

I have a domain, Air-Asia.com.au. I'm looking for an opinion on where I stand with it. There have not been any issues or correspondence regarding the domain from AirAsia even though the site is readily searchable. The domain is parked at DomainApps.com (as what they call a content site). This is obviously the url http://www.air-asia.com.au

AirAsia is global and have the name AirAsia TM'd in some other countries but not Australia - well not quite yet, see below.

I registered the domain 13/11/2011. The domain had been dropped and for the life of me I cannot ascertain the original registration date to see if it was before the TM application date and I'm not sure if that counts for anything anyway?

Some TM data here from IPAustralia.

TM 980227 appears to be a specific mark, i.e. "fancy".... and not a word and hence IMO why they have revived the lapsed application for the "word".
TM 1295392 was applied for but never registered - word & part word (2 words) albeit the TM details show it as one word?
TM 1406408 is the current "Pending" application which is still under investigation, well past the standard time usually taken to approve a TM.

Owners in all 3 cases;

Owner/s: AirAsia Berhad
No. 25-5, Block H
Jalan PJU 1/37
Dataran Prima, 47301
Petaling Jaya, Selangor D.E.
MALAYSIA

One Word

Trade Mark : 1406408
Word: AIRASIA
Image:
Lodgement Date: 01-FEB-2011
Divisional Date: 22-APR-2009
Acceptance Due: 02-JUN-2012
First Report: 02-MAR-2011
Class/es: 39
Status: Under Examination - Extension Fees Not Required
Kind: n/a
Type of Mark: Word

"Fancy"

Trade Mark : 980227
Word: AIRASIA
Image:
Lodgement Date: 27-NOV-2003
Registered From: 27-NOV-2003
Date of Acceptance: 09-AUG-2005
Acceptance Advertised: 25-AUG-2005
Registration Advertised: 16-MAR-2006
Entered on Register: 03-MAR-2006
Renewal Due: 27-NOV-2013
Class/es: 39
Status: Registered/Protected
Kind: n/a
Type of Mark: Fancy

Two Words - Air and Asia

Trade Mark : 1295392
Word: AIRASIA
Image:
Lodgement Date: 22-APR-2009
Lapsing Advertised: 10-MAR-2011
Class/es: 39
Status: Lapsed/Not Protected
Kind: n/a
Type of Mark: Word

All TM's are for Class 39. Search term "online" was used for obtaining the following description excerpts applicable to that term in Class 39.

"Class 39: Providing information, including online, about transport,"

So where would I stand if I was to develop the site? The straw I am clutching to is if the domain name was originally registered before 22 April 2009 then it may be in my favor? (I understand protection is afforded from date of application for a TM and in this case the Divisional date may be the protected from date?)

cheers,
Mike

 

[BenWalker]

After having a quick look on IP Australia, there is a TM for AirAsia which was lodged in 2003.

Which is long before your registration date. Therefore its safe to say you are infringing on their trademark.

 

[shags38]

After having a quick look on IP Australia, there is a TM for AirAsia which was lodged in 2003.

Which is long before your registration date. Therefore its safe to say you are infringing on their trademark.

Thanks for your comment Ben - yes it is actually listed in my post - it is a "fancy" mark, not a word mark, that is why they lodged for a word mark in April 2009.

cheers,
Mike

 

[FirstPageResults]

If you build a site about air asia then they may come after you.. if you develop a site about another topic but monetise it with air travel ads/widgets then you breach the Domain Monetisation Policy... and considering auDA are known to read this forum from time to time.. well that's not a good look.

Honestly can't see why you'd register this name unless you wanted to profit from their brand searches.

 

[Rhythm]

So what if theoretically shags had registered the domain before the TM lodgement date?

 

[Cooper Mills DomainLawyer]

I think you are asking for trouble - I agree with First Page Results, you may be in breach of the most stupid auDA Policy, the Monetisation Policy, amongst other things.

it appears that Air Asia have had logo marks for some time but are now looking at registering word marks. I think you would be unlikely to win an auDRP on the basis that their logo mark was in existence in 2003 (prior to the registration), and you may even expose yourself to some legal action.

Feel free to PM me if you want to discuss