Need Advice - I feel the names are Generic

[marly]

I am a bit confused as to generic names and trademark infringments.

I got an email from a CEO of a high traffic site saying they own the trademark to my domain name and I am confusing their users.


as an example lets look at two words

carseats.com

and mine

carseat.com

or carseating.com

Now whats the go with this.

Further more I checked to see if there is any trademark registered by that company and could not find any for a particular country in which my extention is concerned.

Now I was thinking of trademarking my domain name. Can you trademark a domain as domain.com? or do you have to be a company.

What if there is company call Domain, and on the other hand there is a company that has a trademark of "domain.com" (The whole word makes up the trademark including the extention as the tradeamark)

So was thinking of getting my domain trademarked and then sending him an email to say he is infringing my trademark and confusing my users.

Any thoughts

 

[DNjet]

yes you can get a mark on a .com , but in your case the way you are describing it , the words are generic and as long as you dont infringe on their content you should be ok. In your later part , that wont work, forget about that.

 

[marly]

Thanks SearchSix

But because of the nature of the domain name naturally the nature of the content will be similar in terms of topic or theme

I mean with a name like carseat.com you not going to have content about selling flowers are you.

I should mention, in his email he gave me an X amount of days to shut down my site or he will persue legal action.

Any advice would help

 

[DNQuest.com]

Ok, the first problem here is thinking you can "purchase" a TM. That is completely false, nobody can buy a TM. A TM is earned through commercial usage of the name to which you earn TM rights. What this means is you need to be using the domain in commerence to establish your presense... IE- DNQuest.com is a TM, I have used this name in commerce for 4 years. I earn my TM, anyone trying to use a similar name (which has happened btw), I can go after them for for TM infringment.

Now, a TM DOES NOT have to be registered to be a TM. They my have rights. In your example, it seems an appearent generic term is being claimed as a TM and you registered a similar form of the name in a different tense. Yes, generics can be TMed (Apple, Windows, Cheer) and they can claim TM rights if a domain is confusingly similar to thier name and in the catagory which they have rights.

Since you don't mention the exact name, it is diificult to give good guideance because every domain is unique (but similar cases may hae similar results). The important things is, how are you using the domain? Are you using it in the same catagory as teh TM holder, what do you hopefully wish to accomplish here (That's means, what is your intent? do you have a reason for using the possible TM name, or are you inventing a reason to use the TMed name)?

There are many factors in determining if you are infringing or not, but many senarios have been covered over the years in this forum and you will need to search to see if one is similar to your situation.

 

[marly]

Thanks DNQuest

I bet if you look in the whitepages you will find so many companies infringe on trademarks. All you have to do is type the words "auto services"
So many similar and confusing company names with the words "auto services"

They might of all earned their trademark and been in business for X amount of years, but which one them can claim the right to "auto services"

The problem is when companies think they can claim generic terms that are so common.

Forget to mention this.... Is TM only for commercial use?

 

[DNQuest.com]

Actually, the TM on all of those would be along the lines of "Don's Auto Services", "Jim's Auto Service" etc... If a company would in fact just be called "Auto Services", chances are he would never be able to enforce his TM since the name is a generic description. BUT.... if you called yourself "Auto Services" and moved next door, then he could claim you are trying to profit off of his name by locating yourself so close to him.

There are a ton "What if"s , but like I said, each TM is unique but similar situations may have similar results.

And the problem is people trying to profit off of othe peoples work....

 

[marly]

Thanks DNQuest

What is you view say for example:

AmericanAirways.com
AmericanAirlines.com

cheers
marly

 

[Dave Zan]

Incidentally there are 2 UDRPs where the singular and plural versions of what
are "considered" generic domain names have been taken from their respective
registrants. Many don't agree with them (including one of their panelists), but
it's there.

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-0507.html

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-0681.html

It's still case to case, but those 2 have serious implications.

 

[DNQuest.com]

Thanks DNQuest

What is you view say for example:

AmericanAirways.com
AmericanAirlines.com


cheers
marly

Well, my view point is that Americal Airlines owns American Airways TM.

American Airlines used to be called American Airways. And I think American used Airways as one of its commuter services. So to be specific, there is no issue....

If I go outside the box and pretend the 2 do not connect... It could be said that they are confusingly similar, then again, it could be said they are different words... So the quesiton is, would the one airline be named to try to confuse the customers of the established company?

I would be honest here and say they are confusingly similar since most airlines are defined for thier first name, American, Delta, Continental, US Air, when in fact, thier business names are American Airlines, Delta Airlines, Continental Airlines, US Airways.

 

[marly]

Thanks guys.

Its all BS really that companies can trademark generic terms.

About these two as an example again

AmericanAirways.com - Company that has planes and sells flight tickets
AmericanAirlines.com - A article site about the airline industry in America.

How would this be seen in the courts.

Sometimes it makes me wonder, what N00bs can agree to give generic trademarks to companies, like windows, apple, cheers. For gods sakes man.

Cheers

 

[DNQuest.com]

I do agree that is is much over reaching with generic names. But unfortunately, that is the way things are. There are ways around the system, but what it comes down to is risk and reward.

Risk - How much money are you willing to spend to defend yourself and the possiblity of paying award damages.

Reward - Keeping the domain

It is a cold hard fact of life.