Domain with trademarks in several industries

[sunroof]

I'm considering buying a domain (other than .com) that is in three live trademarks, all in different industries. One of those is owned by a local establishment directly related to the industry for which I would be using the name. By local, I mean that it is located in only one city, and nowhere else.

There are many businesses using the name for their local, one city establishments, both in the United States and throughout the world. And, the entity that holds the trademark in the business similar to the one for which I would be developing the site for does not own the .com.

It seems to me that this is a pretty weak trademark, and that I wouldn't be required to give up the name to any one of the trademark holders, especially since the holder in the related industry does not own the .com.

An analogy for this name in another industry would be something like SuperDryCleaners.com. Just about every city has a business called Super Dry Cleaners. My reasoning is that none of those businesses would have any rights to the name SuperDryCleaners.com.

I thought I'd see if anyone has any ideas on this, or has dealt with a similar situation. Thanks.

 

[Theo]

John Berryhill will correct me if I am wrong, but just because "every" city might have a business called "Super Dry Cleaners" this does not indicate a loss of the tm holder's rights to challenge any of these should their tm is infringed.

 

[DNQuest.com]

In the domain game, it is not based on TM law, but on 3 simple questions:

1- Is the domain similar or confusingly similar to the TM holder?
2- Does the domain holder have rights to a name?
3- Is the domain being used in bad faith?

Every UDRPs asks these questions. So in this instance, does the complainant have rights to the name? they do
Do you have rights to the name? Unless your name is Super Dry Cleaners or have a stored called that currently.. no
Now 3 will be the tricky part, that is where bad faith is established. If you enter into a business along the lines that an established business have, more than likely, you will be found in bad faith. Yes, there are a ton of ways this can be addressed and defenses put up to support your position. But if the panelist feels your are practicing unfair competition or looking to steal traffic, then more than likely you will lose the domain.

I hate to be this simple, but this is the jist of about all UDRPs (there are exceptions).

 

[sunroof]

I started this thread. I just read the decision about inc.mobi being taken away, and that has given me pause in this case. The domain I'm considering is a .mobi. Thanks for laying out the three points very clearly.

 

[Deleted member 5660]

it actually says "your domain name has been registered and is being used in bad faith." As long as there is no bad faith at the time of registration anything you do later should not fall under the UDRP. In one case they tried to call a renewal the registration but I forget which case that was.

Also, if you register in bad faith but later use the domain not in bad faith that should be alright as well but I have never heard of a case with that outcome.

 

[DNQuest.com]

it actually says "your domain name has been registered and is being used in bad faith." As long as there is no bad faith at the time of registration anything you do later should not fall under the UDRP. In one case they tried to call a renewal the registration but I forget which case that was.

Also, if you register in bad faith but later use the domain not in bad faith that should be alright as well but I have never heard of a case with that outcome.

The problem with the first statement is that usage of the domain is sometimes used to determine if the domain was registered in bad faith. additionally, if you register a domain in good faith, and then use it in bad faith, you can still lose it. The way it is interpreted now is "registered in bad faith and/or used in bad faith". Like it or not, but that is what it has come down to. So basically, they will look at usage to determine bad faith or not.