buying a domain with trademark

[oberheimer]

Can someone sue me if i buy a domain with a trademark.
Lets say i buy a 3 letter ???.com which has a trademark on the term ??? but not the ???.com?
Im going to use the domain for something totally different than the trademark is

 

[chatcher]

Can someone sue me if i buy a domain with a trademark.
Lets say i buy a 3 letter ???.com which has a trademark on the term ??? but not the ???.com?
Im going to use the domain for something totally different than the trademark is

You can be sued any time, for anything. I would not worry about a three-letter trademark in an unrelated business UNLESS it is very famous, like IBM or AOL, most of which companies already have their three-letter .com's. In my non-lawyer mind, most three letter combinations can stand for so many different things that they are usually not distinctive. But it is one thing to be "in the right", and quite another to be willing to spend a bunch of money fighting to prove it. Spending a little now for legal advice from a competent intellectual property attorney could save you a lot in the long run.

 

[Garry Anderson]

What you have to remember is that these people in authority are corrupt.

Of course, nobody is EVER going to admit it - they are perverse or too great a coward.

Even many honourable lawyers that have a vested interest in the status quo.

Initialisms and acronyms - a good scam for revere hijacking crooks - the unlawful overreach of trademark.

As my domain is WIPrg.uk you may think that I try to pass off as UN WIPO.

BUT THAT IS NOT TRUE.

The Wing Information Protection Office (USAF) use this acronym also.

http://www.acronymfinder.com/af-query.asp?String=exact&Acronym=WIPO&Find=Find

As my best example - take the initials WTO - you may think of the World Trade Organization.

BUT they share its initials with five trademarks in US alone.

You can even use these initials without a trademark - providing you do not try to pass off as any of them.

Fact: You can use any initials for any lawful purpose you like.

Not that a dishonest UN WIPO arbitrator will let you keep your lawful property of course.

 

[namedropper]

As my domain is WIPrg.uk you may think that I try to pass off as UN WIPO.

BUT THAT IS NOT TRUE.

Let's see... You use it specifically to talk about trademarks and the real WIPO. You most certainly ARE trying to pass yourself off.

But then you are doing it in a rather invisible domain extension on a website obviously written by a crackpot so I doubt anyone in authority cares.

 

[Nameable]

3-letter .com? Better hurry up and register it.

IANAL, but I wouldn't worry about the TM on a 3-letter .com - they've been successfully defended dozens if not hundreds of times. If someone sues you, ask around on this board, there are a few attorneys here who could help you.

 

[Garry Anderson]

Let's see... You use it specifically to talk about trademarks and the real WIPO. You most certainly ARE trying to pass yourself off.

But then you are doing it in a rather invisible domain extension on a website obviously written by a crackpot so I doubt anyone in authority cares.

Ah - our resident trademark expert.

Dan Dan the very sad man.

Forgive me, m'Lud - I should have asked you before making such profane statement.

Your honour, I humbly suggest you read up on the legal definition of passing off - before you judge me guilty of this charge.

I may be a crackpot in your eyes - but your eyes have the handicap of your brain to deal with ;-)

As to my "invisible domain extension" - I have been visited by Governments, United Nations and untold numbers of lawyers.

But you are right about one thing: Those in authority are too arrogant and corrupt to care what any person says about their aiding and abetting corporations to abuse trademark law.

Even our own UK Patent Office are too cowardly to give me straight answers to very simple questions about trademarks.

I put these questions to them with respect and they are hardly difficult - so why do you think that is Dan?

 

[dtobias]

Why is .org.uk an "invisible domain extension"? It's a perfectly reasonable one for British noncommercial sites.

 

[Garry Anderson]

Quote: "Why is .org.uk an "invisible domain extension"? It's a perfectly reasonable one for British noncommercial sites."

Thank you Mr Tobias.

Please forgive the formality, but I did not want to get you mixed with Namedropper for readers.

There are even 1,000,000 sites using .org.uk in whole or part for charity.

http://www.google.co.uk/search?hl=e...site:.org.uk+charity&btnG=Google+Search&meta=

Whilst my .org.uk is not a charity - it is entirely noncommercial use.

 

[[email protected]]

Can someone sue me if i buy a domain with a trademark.
Lets say i buy a 3 letter ???.com which has a trademark on the term ??? but not the ???.com?
Im going to use the domain for something totally different than the trademark is

Anyone can sue you whether they have alegal basis for the suit or not. If you are asking if they could win then the answer is it depends, though the answer is probably not. Three letter domains are per se generic unless you are buying it to re-sell to the trademark owner. see my article at http://www.dnjournal.com/legal/sl_domains_trademarks.htm

Stevan Lieberman
Greenberg & Lieberman
http://www.aplegal.com

 

[Ari Goldberger]

Anyone can sue you whether they have alegal basis for the suit or not. If you are asking if they could win then the answer is it depends, though the answer is probably not. Three letter domains are per se generic unless you are buying it to re-sell to the trademark owner. see my article at http://www.dnjournal.com/legal/sl_domains_trademarks.htm

Stevan Lieberman
Greenberg & Lieberman
http://www.aplegal.com

A decent decision holding that 3-letter domains are acceptable is Kis.com
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0770.html

While the odds of winning a 2 or 3-letter domain are pretty good, the chances would diminish if the 3-letter combination were a famous strong trademark -- and an unlikely random combination -- such as AOL or IBM. Other factors, such as owning other domains incorporating unique trademarks could also weigh against the domain owner.

 

[Steen]

Just to emphasize this for you (oberheimer), the way you use the domain is very important.

If you owned Del.com and redirected it to a computer vendors affiliate program, things most likely will not turn in your favour

 

[Garry Anderson]

"and an unlikely random combination -- such as AOL or IBM"

I beg to differ with you, Ari Goldberger Esquire

You can use any initials for any lawful purpose you like - true or false?

IBM Ich Bin Müde (German: I Am Tired)
IBM Inclusion Body Myositis (inflammatory muscle disease)
IBM Intercontinental Ballistic Missile (also ICBM)
IBM International Brotherhood of Magicians
IBM Italian By Marriage

http://www.acronymfinder.com/af-query.asp?String=exact&Acronym=IBM&Find=Find

AOL Absent Over Leave (See AWOL)
AOL Acronym Over Load
AOL Adventure of Link (video game; sequel to The Legend of Zelda)
AOL Age of Legends (Wheel of Time Series)
AOL Airborne Oceanographic LIDAR
AOL Alarm on LAN
AOL Algebra of Limits (mathematical analysis)
AOL All Operator Letter (airline industry)
AOL Angel of Light
AOL Application Object Library
AOL Assyria on Line

http://www.acronymfinder.com/af-query.asp?String=exact&Acronym=AOL&Find=Find

 

[Ari Goldberger]

"and an unlikely random combination -- such as AOL or IBM"

I beg to differ with you, Ari Goldberger Esquire

You can use any initials for any lawful purpose you like - true or false?

http://www.acronymfinder.com/af-query.asp?String=exact&Acronym=AOL&Find=Find

Gary. You definitely make some good points. I agree there are only so many letters in the alphabet and they generally cannot be monopolized. BUT, what matters under the UDRP is the "intent" of the registrant.

Law is often not black and white or true or false. And I did not make a black and white comment.. I said say your CD (chances diminish) -- not that you would definitely lose. You need to look at the BP (big picture)...If you use IBM for an Italian by Marriage site, but there were other factors tending to show your true intent was to use it for bad faith (sell to tm holder, disrupt its business, confuse users..) you would probably lose in a UDRP case as the Panel might question your intent.

Gary, what you argue as being right is not necessarily the way a UDRP Panel will look at things. The fact is that most (but not all) of the cases with domains containing AOL have gone in favor of the trademark owner. Regardless of whether or not you agree with those results, it is important for domainers to know what to expect before they waste their hard-earned money paying a guy like me to fight a losing battle. Also, it is important to be careful when dealing in famous marks -- even if generic or 3-letter. You need to go out of your way to stay away from the classes of goods and services protected by the marks.

 

[HOWARD]

In summary, the bottom line is whether or not you have a legitimate business use for the domain, which is not similar to the use of the TM ed domain and is not being used in "bad faith". If you can qualify under those standards, you should be able to succesfully defend a UDRP action. (but not all the time).

 

[gogeorge]

I have seen rulings where judges say that the average person can tell the difference between the same name and different extensions. .com is different from .net, .org etc.
BruceSpringsteen.com vs. brucespringsteen.net was a good case. The singer lost on a trademark case.

 

[Garry Anderson]

Ari - whilst making a point, sometimes I come over as combatitive.

I have looked at the Big Picture - which is why I am combatitive - (you may have gathered that).

I believe what is happening now to be against the principles of Trademark Law.

It is very wrong that anybody should pretend to be AOL or IBM - I am not anti-trademark - despite what some critics say. Only a fool would want fraudsters passing themselves off as trademark holder.

That AOL or IBM should prevent others using these initials is equally wrong.

You have identified the crux of problem - UDRP.

UDRP was created by the corrupt UN WIPO with three simple tests to enable trademark overreach:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

Every domain name is identical or confusingly similar as virtually every word is (or can be) registered as a trademark many times over by different type of business in same or different country.

(ii) you have no rights or legitimate interests in respect of the domain name; and

Everybody has legitimate rights to use ANY words for ANY legal purpose they wish. Their three point test falls at this point.

(iii) your domain name has been registered and is being used in bad faith.

An over-broad rule for over-reaching trademark holders to over-step legal boundaries. This can be nearly anything they can make up that can pass as feeble excuse. See JT.com decision, many could legally use these initials for business. This ruling even states that legitimate commerce is bad faith.

On the other hand - if AOL-billing.com is used for bad faith - they should be put in jail - not just have domain taken away.

IBM.gtld, on its own, is not bad faith - unless they use it to sell servers and such.

UN WIPO are clearly biased and corrupt for UDRP purpose. Everything other than trademark holders rights are not their concern - even USPTO recognize and admit this.

Quote: Lois Boland, director of international relations for the U.S. Patent and Trademark Office, said "that open-source software runs counter to the mission of WIPO, which is to promote intellectual-property rights." As she is quoted as saying, "To hold a meeting which has as its purpose to disclaim or waive such rights seems to us to be contrary to the goals of WIPO."

 

[jberryhill]

"See JT.com decision"

Okay, let's look at it.... "The Respondent failed to file a Response to the Complaint."

Woody Allen once said that 80% of success is showing up. It's true. Many indeed could use the domain name for perfectly legitimate purposes. Had the domain registrant gotten off their butt to point that out, the outcome may have been different. But as Ari and others will point out, one of the first things one does with a UDRP complaint is to go through the cited cases, point out the defaults, and take those off of the table.

The quote at the end of your posting was made in the context of a proposed WIPO conference on open-source software. As with the WIPO proposal to expand the UDRP to cover additional subjects, the USPTO and other commentators opposed action by WIPO to expand its reach into areas outside of its charter, and quite rightly.

Default cases against domain registrants are not difficult to explain. But when people bother to answer a UDRP complaint, the results are not nearly as lopsided as you seem to want people to believe:

abt.com
http://www.arb-forum.com/domains/decisions/221239.htm

eaa.com
http://www.arb-forum.com/domains/decisions/206309.htm

pwc.com
http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0087.html

xfm.com
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1298.html

wbw.com
http://www.arb-forum.com/domains/decisions/98813.htm

Garry, how about a simple answer to a simple question:

Have more contested (i.e. non-default) UDRP cases involving three-letter domain names been decided in favor of the complainant or the respondent?

Since you have a lot to say about "bias", I presume you have an answer to that question, yes?

I will tell you as I sit here that I don't know the answer to that question. But I will give you an opportunity to win back the five dollars you paid me the last time you were wrong. Do we have a deal?

 

[Garry Anderson]

John - I have great respect for your skills and the work you do.

I am sure that does not come over most the time - because of my combatitive style.

I only have trouble with what I honestly see as your failure to recognize certain facts.

If I remember correctly - you won that fiver (UK = 8.37 dollars) from me because I did not believe you - that the US would be so stupid as to allow different businesses to register same trademarks for similar product.

I am really sorry that I did not believe you - it was like being told the Pope was not Catholic.

I knew, of course, all about honest prior use; that a similar business may continue use - UNREGISTERED.

It would obviously promote confusion to give more than one the same registered trademark for similar product/service.

The thinking "Let us pretend they are in a different country" is so pathetic that it is laughable - it makes the whole system a Zip Code Lottery.

"...owning a federal trademark registration on the Principal Register provides several advantages, e.g., a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;"

http://www.uspto.gov/web/offices/tac/doc/basic/register.htm

Added to this, those on the Supplemental Register have the right to use the registered trademark symbol - and you have a right pigs breakfast.

Ha ha ha "exclusive right" - funny or what?

I always try my best to get to the root of a problem.

The question you have to ask is this: Upon reading, jt.com was clearly overreach - why was it not thrown out?

The WIPO UDRP system is clearly biased towards their customers - they are corrupt.

The quote at the end of my posting was made to highlight "the mission of WIPO".

Their mission is to "promote intellectual-property rights" which they do to the detriment of the publics rights - demonstrably so.

 

[jberryhill]

1. The JT.com case was not thrown out because the Respondent did not ask to have it thrown out.

2. The US places geographic restrictions on concurrent registrations. The UK does not, but you don't seem to be as bothered by concurrent registration practice in the UK.

3. Most importantly:

I take it that this is your way of declining to accept a proposition on the outcome of contested three-letter domain UDRP proceedings?

I promise, I still have not counted and do not know the answer. Are you really unwilling to put your money where your mouth is on the proposition that the UDRP is enormously biased against domain registrants?

Shall I make it my $10 to your $5?

 

[Garry Anderson]

1. There was absolutely NO REQUIREMENT for Accused (Respondent) to ask to have it thrown out - it was up to the Prosecution (Complainant) to PROVE their case.

His response was on http://www.cyberparty.net/domain/log/000400.txt

Probably it told them to poke their overreaching demands up where the sun does not shine.

I am disapointed that you thought you would get away with that argument.

Initials 'JT' is clearly generic AND clearly valuable.

Quote: the Respondent wrote that "Let me ask you this way, if you owned the JT.COM domain, would you let it go for a million dollars, I think not."

Off hand, I personally know at least two people with those initials - also perhaps billionaires Jim or John Walton (Wal-Mart, $18 billion+ each) might like it.

http://www.nepalnews.com.np/contents/englishmonthly/businessage/2001/july/world.htm

Japan Tobacco was just one of untold numbers of businesses or people that could have used this valuable domain.

2. The US system is clearly a Zip Code Lottery - it is demonstrable fact.

I believe this can be proven in a court of law by showing the Judge some US registered 'La Tapatia' tortillas and asking does the mark 'La Tapatia'® identify source.

AND does the holder have "exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration".

I will take your offer of a bet on this if you like ;-)

As stated before - I was well onto the UK Patent Office before you mentioned it to me.

3. You missed the point.

EVERY three-letter domain name decided in favor of the Complainant show BIAS - unless Accused use it unlawfully of course.

It is not a matter of numbers, but that it happens at all.