Com's Trademark Counts for other TLDs also?

[Pepelux71]

When a site has a Trademarked .com name, is it illegal to own the same name's .net .org .info or .biz domain ?
And If no, what happens if you develop it?

 

[jberryhill]

"When a site has a Trademarked .com name, is it illegal to own the same name's .net .org .info or .biz domain ?"

There is no single answer to that question. "Xerox" is a trademark, and it is a coined word which has no significance other than to refer to a particular company. If you are selling, for example, low-quality photocopy machines, do you think it is going to matter to anyone whether you are using xerox.biz or xerox.info? The point is that you would be using the trademark "Xerox" to sell something other than Xerox brand photocopy machines.

But take another tired example... "Apple" is a trademark for a brand of computers. It is also a fruit that grows on trees. If you are selling the fruit at apple.biz, nobody is going to have a problem with that.

 

[options]

The point is that you would be using the trademark "Xerox" to sell something other than Xerox brand photocopy machines.

While I don't agree with current lunacy in "protecting" TM holders almost unconditionaly in domain name matters, I must admit that the above fact is very unfair to them.

I think a copyright on such made-up, non-generic commercial names should be introduced.
Until then, not sure but it seems that anyone can sell hot-dogs under the name of Xerox, Google, etc. and even trademark it.

Or, am I wrong here?

 

[namedropper]

I think a copyright on such made-up, non-generic commercial names should be introduced.

Single word names can never be copyrighted. That's not what copyright is for.

And since they are covered by trademarks already I can't figure out why you think anything needs to be changed.

 

[jberryhill]

"Until then, not sure but it seems that anyone can sell hot-dogs under the name of Xerox"

Not exactly. Trademark law is more flexible than some folks realize, which I guess accounts for some of the regular questions here (one of these days, I should write a FAQ).

First off, not all trademarks are created equal. There is a scale of trademark "strength" that I regurgitate here about every two months, but don't have time for today.

The main point here is that, at the top of the trademark scope pyramid, are the "made up words" - what are called "fanciful trademarks".

While ordinary trademark infringement involves use of the mark in connection with the same or similar goods and services for which the mark is distinctive, there is also a cause of action called "dilution". The theory behind dilution is that some particularly strong trademarks are subject to having their distinctiveness eroded, even if the goods and services are different. This is particularly true of "famous" trademarks (and there is a set of criteria for determining "fame").

Protection against dilution is the reason why you do not see Coca-Cola laundry detergent or Xerox dog food. These marks are sufficiently strong and well-known that they would likely prevail against the use of their marks, even in connection with goods or services on which the marks are not currently used by the owners.

 

[options]

Good to know, thanks.
Do you have any link regarding 'set of criteria for determining "fame" '?

Edit:
Ok, found it:
http://www.ipwatchdog.com/dilution.html

 

[options]

Single word names can never be copyrighted. That's not what copyright is for. .

True, but this could solve many things if such words could be recognized as “original works of authorship” .

And since they are covered by trademarks already I can't figure out why you think anything needs to be changed.

Because all that is in gray area and is subject to different interpretations.
Even 'dilution' which John pointed to is not perfect.
E.g.:
"The Supreme Court explained that the mere fact that consumers mentally associate the defendant’s mark with that of the plaintiff’s famous mark does not in and of itself provide sufficient evidence to establish actionable dilution. The Court explained that this is true because mental association, without more, does not necessarily reduce the capacity of the famous mark to identify the goods of its owner, which is the statutory requirement for dilution under the FTDA. It is the plaintiff’s obligation to actually demonstrate that there has in fact been a reduction in the capacity of the famous mark. "


With copyright rights all dilema's would be solved.

 

[adoptabledomains]

I generally avoid anything remotely close to a " well-known" trademark, unless I can see some other potential use that would not be seen as a violation to a reasonable person, a judge, or WIPO panel. You really have to go on a name-by-name basis. Two examples are below:

Pepsi - if I saw Pepsi.info available, I would not even attempt to get that name. It's too big, and too popular and the word is not used for anything else I know of.

Coke - If coke.info were available, I would have a very slight temptation to try for it. however, the only chance to avoid problems would be to use it (quickly) for a company that sells coke, a mineral used in the making of steel; or an informational site on the use of cocaine for which coke is a slang term. Since coke (not Coke or Coca-Cola) is a real dictionary word for other than a softdrink, you have some established legal standing to back you up if you have the time, money and wherewhithall to fight it. I also would not use this for a PPC parked site, since it would probably end up being used for the wrong use, endangering your standing on holding it in good faith. Actually, I'd probably pass if this domain were a high cost to acquire, but would probably risk it if I coud get it for a small fee I could afford to lose.

As far as I know, I only own one domain that is trademarked (by a very large retail corporation). This .info name is also a fairly common surname, on which I've set up a Geneology discussion group for the name to establish positively that my intent is NOT to infringe on the trademark. Within the discussion group, I've posted that the name is for sale. I also truly would like to sell the domain to someone with that surname for a moderate and reasonable price rather than have the big corporation own all versions of it. I know people with the same surname as large companies often have little chance of acquiring their own surname domain.

(Please note that this post is not legal advice, but just how I personally operate and decide what is reasonable to acquire and sell without risk of extra time, costs and black marks on my reputation caused by a dispute.)

 

[Pepelux71]

I think that the hole thing is very complicated at all.Let me give a specific example. I own GameBookers.biz. No such a big deal as a .biz
Gamebookers is an LTD with the "GameBookers.com" Trademarked.They also own .net .org & .info
On the other hand if i'm right "Game" & "Bookers" are generic words and GameBookers is a common phrase.Isn't it? In any case it's not something like XEROX or SONY or WilliamHill etc.
I think also that if a firm like "GameBookers" could be Trademarked they would have done it, instead of using the"GameBookers.com" option.

For this case or any case like this (where a "common phrase.com" is a Trademark) no matter if someone owns a .net or .org etc. i have some questions to make to get the point.
1. Is it illegal to own GameBookers.biz?
2. Is it illegal to use this domain name for a site?
3. Does it matter if you use it to sell for example "eggs" or this is legal but you cannot use it for similar to the .com Trademark activites?
4. Does tis example reffers to all of cases where 2 or 3 generic words are used as a .com Trademark or cases may be different depending the activity?
(Gamebookers = bets vs WorldPictures = Photos just an example.)

 

[adoptabledomains]

1. Is it illegal to own GameBookers.biz?
2. Is it illegal to use this domain name for a site?
3. Does it matter if you use it to sell for example "eggs" or this is legal but you cannot use it for similar to the .com Trademark activites?
4. Does tis example reffers to all of cases where 2 or 3 generic words are used as a .com Trademark or cases may be different depending the activity?
(Gamebookers = bets vs WorldPictures = Photos just an example.)

My opinions to your questions:

1. Maybe, maybe not. Is the trademark international, what category does it cover? It would be up to a WIPO/URDP panel or judge to really decide. If you win the case, but it costs you $$$$... did you really win? Actually "use" generally weighs more heavily than "own" in a dispute.

2. A site of doing the same thing? Maybe. A site doing something else? Maybe not.

3. Selling eggs from gamebookers.biz is not going to convince anyone you are not using it in "bad faith" unless you use the eggs you sell in an egg game that you are booking from the site.

If the other site is booking reservations to professional sports games and you are booking orders to purchase soon to be relased video games, you might be far enough apart to get the benefit of the doubt, depending on the trademark filing.

4. Probably not.