a general TM question..

[DomainMagnate]

Suppose you have a <something>.com domain and there's a trademark registered on <something>, but you use domain for a site totally unrelated to the company or product that the TM is registered to.
So can they take your domain?

thanks

 

[DNQuest.com]

Too many variables and too vague to give a yes or no answer. Is the TM unique, meaning, is it a made up word or is it generic in nature or descriptive? Multiple TMs can exsist on the same word, Apple is always the first example given. Apple Records and Apple Corp. They each have their own TM in their catagory. Now if you were to use Microsoft, that is a different story, it is a made up name and not generic.

Anyone can file against anyone for anything.... So they can come after you and try, how hard are you willing to right?

 

[DomainMagnate]

TM is an acronym, but its quite unique. The domain i was curious about was a 3 char domain, but my question is general..
Thanks for the answer.

So in general if the tm is on a word like microsoft and not apple, that has no other meaning, can you say that generally the domains are returned to the company holding the TM if the complain is filled?

 

[DNQuest.com]

So in general if the tm is on a word like microsoft and not apple, that has no other meaning, can you say that generally the domains are returned to the company holding the TM if the complain is filled?

The figure I saw was 84% of disputes are in favor on the TM holder. Having a TM alone does not automatically give the domain to the TM holder, the TM holder must prove the 3 criteria in order for the TM holder to be successful

1- is the domain similar or confusingly similar to the TM?
2- does the person have rights to the domain
3- was teh domain registered/used in bad faith

Now, criteria 3 was written originally say say the domain must be registered in bad faith in order for this criteria to be met. But it has degenerated to usage of the domain being in bad faith. Meaning, if you have a domain before an established TM, then after the established TM you start illegally infringing on the TM, there may be a chance you can lose. Yes there are factors involved and not as straight forward as presented. Additionally, bad faith registration is proven through usage of the domain. This means, if they cannot prove you registered the domain in bad faith, they will show you usage (and if proven you are profitting) and assume it was registered under bad faith even though you may have registered the dmomain with good intentions.

ADD: Acronyms can be tough, AOL, IBM, HP, etc. Then again, someone can create a reason to registering a TM acronym, but you better be able to back it up. Als Old Luggage, Irreplacable Bathroom Merchanise, Howe's Potatoes. Then agian, you can go the generic route, but if your site offers similar things to the TM holder, your chances are not good.

 

[DomainMagnate]

thanks a lot DNQuest.com, that answers my question

now, on a similar matter, while we're here, why sites like paypalsucks.com, oreilly-sucks.com etc.. which obviously violate the TM can exist?

 

[DNQuest.com]

Simple. good faith usage of a domain and the freedom of speach... the way it should be.

But to correctly make your statement, it isn't violating TM, the sites infringe on the TMs, and it was determined it was legal infringement. But there is a fine line legal/illegal...