Turning a TM into an acronym???

[StrictlyNames]

For instance... if you were to register FORD.info and put up a site called the Federal Organization of Research and Development, or the Free Order of Rubber Ducks, etc...

How likely is it that you would lose the domain name?

What are the issues here?

Let's say it's and even more specific than FORD. (as it could be someones last name) and actually is.... but let's say it's PEPSI.info and you put up a site that is an acronym such as Physical Education Playground Systems International.

Any thoughts?? Legal Expertise??

Thanks,
Dave

 

[Spider]

I am not an expert but these names have already been TM'd so you trying to create another meaning wouldn't really matter to WIPO or anyone else.

 

[Garry Anderson]

Taking it that you enquiry is in good faith - that you are not a scumbag who wants to blackmail PEPSI (or similar) for the domain name.

Acronyms and initialisms are fair use for anybody. For example, the World Trade Organization (WTO) shares its initials with five registered trademarks in US alone. This could be any acronym or initialism - including the famous International Trade Centre (ITC) or International Monetary Fund (IMF).

My favourite: WIPO

WIPO Wing Information Protection Office (USAF)
WIPO World Intellectual Piracy Organization - Yep that is me folks ;-)
WIPO World Intellectual Property Organization - IMO corrupt individuals

http://www.acronymfinder.com/af-query.asp?String=exact&Acronym=WIPO&Find=Find

I would imagine that you could even register P.E.P.S.I. (Physical Education Playground Systems International) on the US trademark system.

If a trademark lawyer tells you that is possible - then there is nothing stopping you using it as domain name. IMO it would be overreach for PEPSI to take it off you.

I presume you have heard of the famous UK FTSE?

See the FTSE "FALLS" IN DOMAIN DISPUTE:

The Financial Times and the London Stock Exchange were given a slap on the wrist after a WIPO panellist ruled that they had not provided "one iota of evidence" that the registrant of ftse.biz had taken the domain name in bad faith.

...They instigated proceedings against David Sprake who registered ftse.biz for his business "First for Training, Service and Education" which was known, perhaps reasonably enough, by the acronym "FTSE".

http://www.demys.net/news/2002/08/02_aug_19_ftse.htm

 

[jberryhill]

"How likely is it that you would lose the domain name?"

It will depend largely on the "aroma" of legitimacy than whether you can think up some sort of acronymic correspondence.

Please excuse the redundancy, but some of these issues are perennial. Take a guy who lives a stone's throw from the Wake Forest University Baptist Medical Center who one morning decides to start the "Web Forum for Unaffiliated Business Management Consultants".....

http://www.arb-forum.com/domains/decisions/125751.htm

I still scratch my head wondering what the heck an "unaffiliated business management consultant" might be, or why they might want a "web forum" for doing this unaffiliated consulting.

Then there was the famous "Mud Sweats Downhill World" (msdw) case, where the domain registrant just "incidentally" happened to have morganstanleydirect.com name...

http://www.rbd-law.com/domain_names/court_cases/msdwonline-com.htm

Credible acronymic uses, versus something that someone made up on an ad-hoc, or worse post-hoc, basis, are sorted out on the basis of the Panel's gut feel. For example, whether one recognizes "PWC" as the generic acronym for personal watercraft, or as a trademark for Price Waterhouse Coopers, can depend on what one's hobbies happen to be. In general, the longer the acronym, say five letters or so, the more difficult it is going to be for a panelist to accept that the correspondence between your obscure acronym and a famous trademark is just a coincidence.

When you see a domain name that is four-letters long and begins with a K or a W, then you might wonder right off the bat whether the domain name registrant lives in the broadcast area of a US radio or television station that uses those four letters as its call sign.

Another example - PRADA - Italian Design House or acronym for "Public Relations and Design Analysis"?

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1090.html

None of these cases boil down to "can the domain name be an acronym for something else" - of course it can. What the cases boil down to is "what is really going on here?" and "what other relevant behavior is or is not present?"

 

[StrictlyNames]

Thanks for the replies guys. I have 2 domains that are clearly trademarked. One of them, the company seems to own all extensions (except for the one that I have), and the other... the company seems to only own the country codes... not the .net, org, biz, info (mine), etc....

BIG Companies

Any suggestions on how to proceed.... I did only register them because of their potential, and for only 8 dollars each I figured it was worth the risk, and since they were so inexpensive if I were to lose them I wouldn't be that upset.

Thanks again,
Dave

 

[namedropper]

Originally posted by StrictlyNames
Any suggestions on how to proceed.... I did only register them because of their potential, and for only 8 dollars each I figured it was worth the risk, and since they were so inexpensive if I were to lose them I wouldn't be that upset.

My suggestion then is to purposefully lose them yourself before the big companies force the issue and brand you a cybersquatter... or, if you are in the US, before you get slapped for violating the anticybersquatting law.