Is it Trademark Violation if you are a registered dealer?

[krossat]

My question is:

For example, if you are a registered reseller of a product lets say an iPhone in another country (lets say New Zealand). If you have a company website representing iPhones and is called iPhones,co.nz, is it still infringement? Is there a trademark violation? You have a genuine business backing up the product with a showroom and sales?

What if you were using an extension like ,net or .org with the same name, but are a registered company dealing in the product?

Why I'm asking this is because someone is dealing ina product and have been offered a top name for the same brand (the only brand he deals in at the showroom), but for a rather hefty sum. He wouldnt mind paying for it and having his business being represented by the name, only concern is he safe to do it? Can the company still take it if they decide to take the name for their promotion or something?

Cheers!!

(Wasn't sure where to post this, sorry if this isn't the right section)

 

[HolyRoller]

Personally I would say this is a trademark violation and would be extremely cautious if buying a TM name even though you are selling the product.

Someone I knew was in a similar situation and purchased a domain name like this <product>store.com - not only were they sued by the TM holder, but they lost the legal battle, lost the domain and were liable for the other parties costs.

They would be well advised to seek proper legal advise, also the person selling the domain to him for a hefty sum is also breaching the TM by doing this.

NOTE: I am not knowledgeable on TM laws in New Zealand, which are likely to be different from UK and US. Hence recommendation to seek legal advise.

 

[krossat]

Thanks for your reply HollyRoller.

Yup thats what I thought, but for a second it made me think. What if a company is lets say a gold partner of the manufacturer / brand. How is it bad faith to maximise sales by using a brand domain, when they have the right to sell the product and are in fact doing the same? Does the company owning the trademark have a right to sue a company they have given a right to sell the product?

Just a thought.
I will give my m8 a heads up though.
Cheers! k:

Personally I would say this is a trademark violation and would be extremely cautious if buying a TM name even though you are selling the product.

Someone I knew was in a similar situation and purchased a domain name like this <product>store.com - not only were they sued by the TM holder, but they lost the legal battle, lost the domain and were liable for the other parties costs.

They would be well advised to seek proper legal advise, also the person selling the domain to him for a hefty sum is also breaching the TM by doing this.

NOTE: I am not knowledgeable on TM laws in New Zealand, which are likely to be different from UK and US. Hence recommendation to seek legal advise.

 

[Cartoonz]

food for thought...
http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0187.html

It's really going to come down to what the relationship is to the TM holder and what licensing rights that relationship allows.
"Mercedes Benz" is obviously a TM but you bet your butt that there are 100's of "City"Mercedes-Benz.com names registered to dealers all over the world... which Mercedes does not mind because they have that licensing agreement... but an independent or a competitor? They'll get killed.

 

[katherine]

Here is another interesting decision: http://domains.adrforum.com/domains/decisions/1318229.htm

But in general I would stay away, at the very least I would want written agreement from the TM holder.
Some TM holders have a lax approach, while others defend their brands vigorously.

Unless the domain has got traffic, what's the point of paying a 'hefty sum' ?
After all, it can be a liability. Or perhaps somebody is looking to dump a domain ahead of future trouble :yes:

 

[Tia Wood]

Agree with the others and you are better off sticking to a generic in this case. It would be tragic to build a brand with a possible TM violation only to have it snatched away later, ruining your business.

 

[Gerry]

It's not your brand - period.

You can be a reseller (like MacMall.com) but must have permission from the company to use their registered TM as well as display their products and logo.

A brand is a brand is a brand no matter which extension you use.

To do this you are just adding to the disdain that corporations have for "cybersquatters". Their biggest issue with domainers and ICANN are the proliferation of gTLD's and ccTLD's. A company should not have to register over 260 domains to protect their brand.

In fact, they won't. And some will not even waste their time filing a WIPO or URDP. Take Microsoft for instance...why file paperwork or waste time for a WIPO or URDP. They file court papers in district, superior, or federal courts. I personally look for more companies to do this. A URDP or a WIPO is a process set up in conjunction with ICANN, who in turn are the one's that do not enforce the registrar's to prevent the registration of TM names.

Filing in court can award damages to the claimant.

 

[krossat]

Thanks guys for your replies. I quite agree with it. In fact I've told him that he should use his companyname.co.nz or a smiliar sort or probably build up a generic name and spend the money marketing the same.
I'm not sure whether the domain has any traffic, the only reason he got attracted was its a <purebrand>.co.nz (which is probably the worst idea to get, reading the feedback).

Why pay for something that doesent have traffic, but is a wonder of a name?... memorability, direct relation to business etc?

Well, I'll make sure he doesent go for the domain. There are lots of one worders available in co.nz, he can still pick up a generic word and market it.
Thats what I like about this forum, few and well informed replies; instead of gzillions of "I think you should (flips a coin) do this...!"

Thanks all, quite appreciate it!
Cheers,
Kross

Here is another interesting decision: http://domains.adrforum.com/domains/decisions/1318229.htm

But in general I would stay away, at the very least I would want written agreement from the TM holder.
Some TM holders have a lax approach, while others defend their brands vigorously.

Unless the domain has got traffic, what's the point of paying a 'hefty sum' ?
After all, it can be a liability. Or perhaps somebody is looking to dump a domain ahead of future trouble :yes:

 

[Dorin]

depends on TM holder's policies, some permit resellers to use their brand, some do not permit at all.
for example benz 4s resellers are permitted to use 'yourname benz 4s reseller' to promote their biz.