Can a name be a TM ?

[jasdon11]

Hi

Looking for advice. I have some domains, ferraris.ws - porsches.ws - bentleys.ws etc. Are these subject to TM issues as Ferrari, Porsche and Bentley are all reasonably common surnames in Italy, Germany and Britain ?
There is a restaurant near me called Ferraris and I know of a nightclub called Bentleys.
Any input would be handy - thanks in advance

Jasdon11

 

[DNForum-News]

From what I know, is that if you target your domain(s) in the intent to steal traffic then yes they would come after you for TM issues, for example if you target ferraris.ws towards Ferrari "the car" or "formula 1" "Shumauker" etc.. they could easily come after you.
As for it being a TM name, I'm not too sure about that, as you mentioned if there are restaurants etc.....with the same name then I'm just assuming that they can't touch it. But I'm really not that familiar with TM domains.
It just seems logical that even though you can keep the name you still cannot target it to their target market...
Hope this helps a little, but there are experts on this forum that will for sure explain it in full detail for you.

-Susan

 

[denny007]

Originally I wanted to post like "no one will give a fcuk about .ws" but checking Google, some companies does...

 

[hugegrowth]

There is an interesting case in Quebec Canada where Mattel (the maker of the Barbie doll) is suing a restaurant owner whose restaurants are named Barbie's. The restaurants serve barbeque type foods and have nothing to do with dolls obviously. Not sure if that case has been settled yet or not, but it has been going on for a while.

You'd think if the name was fairly common and you weren't using it to promote the same product, you'd be safe. But large companies can be agressive when it comes to protecting their names.

 

[DNQuest.com]

Yes, names can definately be TMed, all the ones you stated are all TMed. There is no getting around that. But keep in mind they only have TMs in certain catagories. So if you are a name similar to a TMed name, if you use the name in a different catagory, then they would ahve a hard time defending thier mark. Usage is very important when it comes to domain names. If your name in Bentley and you sell cars, you will ber violating thier TM. If you sold TVs, they don't have anyhting to stand on.

 

[jasdon11]

Thanks to everyone so far - in the past I have fought a large company and won, even after my lawyer has told me to settle. Admittedly nothing to do with TM or domains, but relevent to business and capital gain. My feelings are that if the website doesn't compete with or detract from their brand, no objection can be upheld.
As Ferrari or Bentley etc is regarded as a premium brand, could this be argued as just a happy coincidence if you are selling a higher value product.
Do you think this is why the googles and alexas pick such names in the first place - it not only makes them unique, but also offers a level of built in protection?
Thanks and regards - Jasdon