Domain Names and Trademarks???

I'm no lawyer but as I understand it, if you own xyzsucks.com and if it represents your experience dealing with company XYZ then it represents your opinion and is OK.

It's sad but true, that some businesses think that as long as they have a strong case for the rights to a domain (as might be in this example) they can always take variants away should that be necessary. So they buy the 4 or so well known TLDs and feel comfortable building their business.

A lawyer costs $200-400 per hour. A complete set of domains probably would come to about an hour or two of legal fees? Same old story...different day.

There was no reference to TRADEMARKED words.

It I put up a site called WordWordWord.com does that infringe on Microsoft Word?

I seriously doubt it as WORD is a generic term.

However, PowerPointPowerPointPowerPoint.com might get me in some deep shit.

The domain is made of dictionary words along the lines of - allaboutwidgets.com - It has been online since 1999 and the previous owner sold some of their own products - marketed under the domain name allaboutwidgets.com for several years.

The owner of all-about-widgets.com doesn't have a trademark.

I think you should be fine (insert caveat about not being a lawyer here)
on the trademark side I was once given some great advice from someone who has defended many of these cases and the best strategy is to challenge their trademark - i.e. you say they have overextended their trademark's grounds and thus may have invalidated it.

What this essentially does is turn the previous statement on it head.

A lawyer costs $200-400 per hour. A complete set of domains probably would come to about an hour or two of legal fees? Same old story...different day.

now you have a big corporate trying to win a $400 domain name and risking a $$$$$$$$ trademark.

I really should get a template letter typed up as a generic response.

Some jackass tried to strong arm me out of my own last name because he just so happened to open up an internet business in a city of my same name called 'MyLastName Net'.

Just so happens I'm the family genealogist and I pointed out to this idiot that the city and county were both named after a distant cousin of mine in the mid 1800s and if anyone had any rights to this name, it would be ME before it was HIM! Then I mentioned what kind of bad press he would get when it hit the papers that some slimeball internet company was trying to strong arm a descendant of the namesake of their city, just see how many registrations your service would get then amid the sneers and cabbage throwing when he was seen in public.

Went away for a while and I thought it was over.

Then he offered me $50K for it and I told him the family name wasn't for sale and to go pound sand.

Never heard from him again.

Do they own the registered trademark for the keyword-keyword-keyword name of their company? Have been been doing business under it for a number of years? (I think it's supposed to be 7 years...but it might be 5...can't remember at the moment.)

If they have it trademarked and your site might cause consumer confusion that you are related to them somehow, I would guess it could come back to haunt you if the other company ever notices you.

It's actually pretty surprising what generic words you can get trademarked if you've been using them as your company or product name for long enough.

Obviously Microsoft can't stop people from using the word WORD, but they could probably prevent another word processing company from naming it WORD.

Still, I'm no lawyer, so definitely don't go by me!

Jill (owner of generic phrase registered trademark High Rankings®)

from Chilling Effects:

A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.

A fanciful mark is a mark someone made up; examples include KODAK or HÄAGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.

A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.

A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.

Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.

and/or are generic, I believe that there's little they can do. Some domain/site owners can make a case that they have effectively trademarked a previously untrademarkable name through marketplace use of the name, and establish TM rights on that basis ...

However, I'm no lawyer; this just represents legal advice I've gotten and used, plus some experience. As Aaron noted, consulting a lawyer is the best advice. Trademark law and domain ownership are among the more murky areas of law I've ever encountered. Sometimes I shy away from questionable domains just because I don't need the headaches. Plenty of other opportunity out there. :)

Hi,

Your fine...don't let them bully you. Sounds like he maybe infirnging on your domain name...lol. No one in this world has a trademark on-a-three-word-Hyphen-dot-com domain name.

If they want to bully you they will file a complanit with Icann...it cost them $1500 to do so. If you do not fight back then they will be awarded the domain if they can show a trademark infirngment. I have had this happen to me a couple times and I did not fight them because I did not care if I lost the domains for two of them and they were filed by huge corporations I did now wish to go head to head with.

When I say bullied, I mean if any of these companies would have just ask me nicely I would have given them the domains for the $7.00 It cost me to register them...Instead all of them spent maybe $3,000 - $10,000 for lawyers & para legals to file a 100+ page compalints with ICann and then more money to fedx me copies of all of it. A real waste.

What I am saying is it will cost this guy a min of $2000(Filing fees+lawyer) and he has to prove you violated his trademark. And like I said, Theres a 99.9% chance he does not have a trademark.

Having Icann award them the domain is the only way you can loose the domain other than someone highjacking/stealing it. Make sure your domain is "locked" with your registar and you will have no worrys.

Don't loose any sleep ovet it.

Dan

In the original thread I mentioned my latest purchase in response to Brian Turner's statement (that I agree with) -

Social issues aside, the failure to own the .com of an internet-based company is a major branding failure, IMO.

I didn't expect my response to turn into it's own thread, but here we are... I wasn't worried nor concerned then and I'm still not. It's a non-issue for me. I don't fear C&D letters, threatening attorney's or even Chilling Effects articles. The only thing that matters to me is the how a court/arbitration rules on a case.

My purchase was a generic term for a specific, well known business. Tough nuts for the slow company all-about-widget.com.

It pays to be aware that other jurisdictions outside the USA have other laws which may come into play. For example: the common law infringement of passing off in the UK.

And then dictionary words by themselves aren't necessarily safe when used in certain contexts:
"Vorsprung durch Technik" (where Audi wasn't sleeping when it came to domain names)
or even visual cues used in context (golden arches).

Stever is right, there have been some weird ones over here.

EasyJet, fair enough, but this corp think they have rights over all "easy"+"generic". Even tried it on with a chap I worked with. He ignored them but they still must have spent a few quid on this. But then I suppose the legal dept have to justify their existence.