domain trademark question

[DNGeeks]

This is a bit different than I've seen before so I figured I'd ask this question in here.

If I was able to register the trademark somedomainforum.com, is it possible to request other people to stop using that phrase either as a directory name or file name?

So if someone owned blah.com/somedomainforum/ or blah.com/somedomainforum.html could anything be done about that, and what could be done? Would a UDRP be in order for that type of usage? What about usage prior to the tm application, can they still use that directory or file name afterwards?

 

[mike031]

udrp is for domains, not directories.. lol

i don't think you have much of a case here anyways, so i wouldn't bother.

 

[DNGeeks]

Instead of attempting to be condescending, why not answer the question I asked.

could anything be done about that, and what could be done?

It's still technically use of a trademark without permission. So what can be done? Again, whether anyone bothers or not isn't the question. If you don't know or don't have the answer, don't reply.

 

[mike031]

with all this ifs, maybes and buts, there is only one way to find out... do keep us posted, this should be interesting

though..... keep in mind;

udrp --- you stand no chance

sending out c&d's --- this would probly be your only option, so why not..got nothing to lose

if you got time and $ to spend, go for it...maybe you are onto something :cheeky:

 

[denny007]

could anything be done about that, and what could be done?

You can sue them if you got the budget, see Playboy VS Calvin:
IT IS THEREFORE FURTHER ORDERED that:
sing in any manner the PLAYMATE or PLAYBOY trademarks, and any other term or terms likely to cause confusion therewith, including PLAYMATELIVE or "playboyxxx.com" or "playmatelive.com", as Defendants' domain name, directory name, or other such computer address, as the name of Defendants' Web site service, in buried code or metatags on their home page or Web pages, or in connection with the retrieval of data or information or on other goods or services, or in connection with the advertising or promotion of their goods, services or web sites;

http://www.loundy.com/CASES/Playboy_v_Calvin.html

.

 

[Steen]

If they are infringing on your mark for the intent of driving traffic and/or revenues to their own website then yes, I don't see why not. This is like using a trademark in the title, meta description, URL and/or domain name for better SEO rankings. The UDRP would not deal with this matter, generally you would have your attorney send the infringing party a cease and desist letter.

I am no lawyer and this is definitely no legal advice.

 

[DNGeeks]

That's basically what I figured thank you.

I would have assumed someone had thought of this beforehand especially in regards to WIPO. What's to stop someone from using www.somedomain.com/playboy.com/ to try and generate traffic via search engine keywords?

And since the defendants were US citizens this case was easier to handle. What if the possible infringer was from the UK (or anywhere).

Of course C&D's might work on a few people/sites, but that's not really the direction I was going in. I was thinking more of legal remedies such as yahoo's recent in rem lawsuit but (again) don't know if that could apply to such a case.

 

[DNQuest.com]

First, remember you do not register for a TM, a TM is earned. You register your mark after you establish ayour TM (yes, there is future use, but you still need to establish a TM before final approval). The mark itself and usage are are very important in relation to how strong it is.

The Playboy case is an injunction against a company until the merits of the case are heard. But there was a precedent set where Playboy was ruled generic and that Palyboy did not have a monoploy on the name.

Playboy Enters., Inc. v. Netscape Communications Corp., 55 F. Supp. 2d 1070
(C.D. Ca. 1999). This case involves the sale of online banner ads keyed to specific search terms: "playboy" and "playmate." The Court ruled that the terms "playboy" and "playmate" are generic and that Playboy has no monopoly on those words in all forms. Consequently, the Court denied Playboy’s request for a preliminary injunction against Excite, Inc. and Netscape Communications Corporation finding that the sale of those search keywords to third-party advertisers which operate adult entertainment sites does not constitute trademark infringement or dilution.


There was a case involving 2 car manufactureres where one company used the competitors models to steal traffic searches (I believe it was GM and Ford). I need to look this up since it has come up several times recently.

ADDED: Here is one I found dealing with meta tags, it is long, but jsut scroll down to the ruling... http://laws.lp.findlaw.com/9th/9856918.html

http://www.garage.com/resources/reference/internet_metatags.shtml

 

[LizzeyDripping]

I have edited this post - as a UK citizen I was disputing all this business about "earning" trade marks - we can file in the US without use. I now hear that you poor US citizens have to actually have use and not just intention to use. Onerous and irritating for you I'm sure!

Ta!