This is one I haven't heard of before

[sunroof]

I just bought a pronouncable .com domain on a drop, and the last two characters of the name are the same as a popular country code. In fact, someone else has registered the same name, except they are using the country code as the pronouncable part of the name.

For example. if the name I bought is ABCDEFG.com (assume ABCDEFG is pronouncable), someone else is using ABCDE.fg for their site, and ABCDEFG is the name of their product. Also, the domain name I bought (ABCDEFG.com) was used to sell a service, and it went online 2 years before ABCDE.fg. I checked USPTO, and there is no trademark filing for ABCDEFG.

I parked my name (ABCDEFG.com) with a key word related to the service of the company that originally used it, which is different from what ABCDE.fg sells.

I don't think I'm infringing, but I'd be curious to see what you guys think, especially someone with legal experience. Thanks.

 

[marcorandazza]

In Reply to your Post [post=1545129]This is one I haven't heard of before[/post]:

I checked USPTO, and there is no trademark filing for ABCDEFG.

You should know that this isn't necessarily relevant. Common law rights are more challenging to prove, but just as valid as registered rights.

I parked my name (ABCDEFG.com) with a key word related to the service of the company that originally used it, which is different from what ABCDE.fg sells.

This is where you probably should find the most comfort. If the company that originally used the domain dropped it on purpose (went out of business or abandoned its mark), and you are trying to cash in on their residual goodwill, then they probably don't have a beef with you. However, if they didn't drop it on purpose or abandon the mark, you may have some issues.

However, those issues would not be properly asserted by the registrant of ABCDE.fg.

Naturally, I'm flying blind here -- since I don't know the actual domains or marks. But, from the information you have provided, it seems like you should be fine.

But, you should probably research this:

A) Did the original registrant of ABCDEFG.com drop it on purpose or through neglect, or worse yet, was it stolen by a third party? "Finders Keepers" doesn't work for dropped domains.


B) Does the party that owns ABCDE.fg have a common law trademark to the term?

C) Is your use, while different, within the "natural zone of expansion" for ABCDE.fg's mark?

My gut says you don't have a problem, but you should do some more due diligence to fully assess the risk that this domain may hold for you.

 

[Theo]

So essentially they are using a domain hack to promote their trademark. E.g. as if there was a .ft TLD and Microso.ft was owned by you guessed who.

 

[marcorandazza]

I didn't see it that way from what the OP said. I interpreted the facts the other way around.

 

[sunroof]

I started this thread, and I appreciate the comments so far.

I checked USPTO for ABCDE.fg, and there is no trademark for it.

Also, the company using ABCDE.fg is located in the country represented by 'fg'. I assume that ABCDEFG.com was not available when they started their site, because ABCDEFG.com was still in business at that time, and appears to be out of business now.

So, I think I'm OK, as long as any parking ads I put on the site are related to the business of ABCDEFG.com, and not ABCDE.fg. And I'm certainly not going to approach ABCDE.fg to see if they want to buy my name, then I could be accused of squatting on it.

 

[marcorandazza]

Seems reasonable to me - especially your intention to patrol your parking ads to be sure that you don't encroach on abcde.fg's turf.

 

[msn]

I think you could be coming into issues. You said that there is no trademark for ABCDE.fg at the USPTO - but what about for ABCDEFG?

If you think about the .eu mess, an unusually high number of trade mark claims were submitted which made use of non-value characters - think A*B*C*//D*E*F*G* which allowed some crafty folks to go after ABCDEFG.eu in sunrise. What can you say about your own ABCDEFG.com other than its ABCDE.fg "sound-alike"?

 

[marcorandazza]

How is this for an idea... can you track down the prior owner of ABCDEFG.com and buy some of their remaining assets, including their IP?

 

[msn]

That is a good idea.

 

[sunroof]

I checked for a trademark on ABCDEFG before I bought it, and there wasn't one, so I'm OK there. The idea about contacting the previous owner and trying to buy the assets is an interesting one. I'll see if I can track them down, and what they may have.

I'm not quite sure what MSN is saying about the .eu names.

 

[HolyRoller]

As I don't know the business or its name I may be wrong here, but what if someone buys this business, buys the rights to use the business name or restarts the business, then tries to reclaim the domain name? Not having a TM does not mean they won't have rights to the domain and parking and placing ads similar to related to their business may show you were aware of the business before hand and could be used to show bad faith.

 

[flamewalker]

Based on whats been said here, it seems tehy abandoned the assets and name... and someone else got it (the op). if someone bought the assets of said business it wouldn't give them rights to the domain name as it was abandoned imo.