What is the relation between Trademarks and Domains?

Question

For what I have read here, I understood that if I buy a domain of an already registered trademark (in which country, by the way?), I might have a problem at hands.

But it is not clear to me what happens if I register a domain when no trademark exists, but then someone registers the trademark (and where?).

Can that person sue me and take out the domain, which I bought before she acquired the trademark?

Here I quote some of the text from the link above as reference:

Warning. Warning. Possible trademark infringement

Here’s how it works: Mandated by ICANN for all new gTLDs, the Trademark Claims service warns trademark holders AND domain name registrants (people who register domain names) of possible trademark infringements. First, the service sends a potential domain name registrant a warning notice when they attempt to register a domain name that matches a trademarked word or phrase in the TMCH. Then, if the registrant continues to register the domain name after receiving and accepting the notice, the service sends a notification of the registration to the trademark holder.

As реr ICANN ruleѕ, the registrar (like GoDaddy) must notify customers who pre-registered or registered a domain with a trademark claim against it. The customer must acknowlеdgе the claim аgainst their domain in order for us to proceed with the registration of the domain at the registry. The way we notify customers about trademark claims, and how they acknowledge them, depends on whether they registered during Pre-Registration, Early Access or General Availability.

Answer 1

Your quote from GoDaddy is based on ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP para 4(a) sets out the elements which must be proven for the complaint to be upheld:

(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.

What if I register a domain when no trademark exists, but then someone registers the trademark?

The UDRP does not explicitly address this. However, if the mark did not exist when you registered the domain, it would be difficult for the registration to have been made in bad faith.

This has been considered by WIPO (who is one of the larger dispute resolution providers for the UDRP). In particular, WIPO's overview provides:

Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

That is, unless the registration was done in bad faith knowing that a mark would soon be registered:

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.

Can that person sue me and take out the domain, which I bought before she acquired the trademark?

Yes, though "suing" is probably inaccurate. There is no suit, but merely mandatory administrative proceedings occasioned by a complaint. If the complaint is upheld, the domain may be cancelled or transferred (UDRP para 4(i)).

This is not as unfair as it might seem at first blush: if the domain was originally registered in good faith, it will not be transferred even if a trademark is registered later.

What country must the trademark be in?

It doesn't matter: there must merely be a trademark somewhere. By way of example, WIPO case D2016-2612 was a recent case where a .com domain originally held by a Canadian registrant was transferred to a Turkish complainant based on a Turkish trademark.

Answer 2

By registering a domain, you might enjoy protection under trading name provisions. The scope of such protection is usually limited to the extent the name is known to a specific audience, e.g. a specific region and/or specific customer group. Trademark registration solves this issue, because the protection encompasses the whole territory of the registration state.