IT.COM

discuss Can a GTLD used as a name hack cause Trademark issue

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EG:
Say Blue Realty is trademarked
Will Blue.Realty be a problem?

Being that Both Blue and Realty are generic words


What If I use Blue.Realty as a medical business? WIll it cause less problem?
 
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Say Blue Realty is trademarked
Will Blue.Realty be a problem?

Yes.

Being that Both Blue and Realty are generic words

So are "Burger" and "King". Most trademarks consist of dictionary words. But there is no kingdom of hamburgers out there somewhere which is actually ruled over by a Burger King, so most people immediately recognize that word combination as a well known fast food restaurant.

Can I use "Burger King" for a plumbing business? No, but the better question is why would anyone want to do that?

What If I use Blue.Realty as a medical business? WIll it cause less problem?

Yeah, if I have a medical problem, I'm going to head over to "Blue Realty" to get it treated, because the name alone tells me those doctors know exactly what they're doing. Afterwards, I might even have lunch at Ace Sewage Service.

Trademarks exist on a scale of relative distinctiveness. Some marks are more "inherently distinctive" than others. Let's look at some potential realty business names:

Boston Realty
Town & Country Realty
Welcome Home Realty
Blue Realty
Booyanuts Realty

Those names are on an increasing scale of inherent distinctiveness. "Boston Realty" is pretty much a generic term (it straddles the line between generic and descriptive, really) referring to realty in Boston. It is unlikely to be owned or used by any one party. "Town & Country Realty" is somewhat descriptive - they likely deal in both urban and rural real estate, but it's not clear where. "Welcome Home Realty" is suggestive - it is connected to the idea of realty through the phrase "welcome home" which is inferentially related to acquiring a home, but is not directly descriptive of buying one. "Blue Realty" is arbitrary - the color blue is a dictionary word, but is arbitrarily applied to realty. Finally, "Booyanuts Realty" is what we call a fanciful mark - "booyanuts" has no meaning whatsoever and is a word I just made up for this example. Fanciful marks are classically the strongest marks, because they have no meaning other than in connection with the trademark.


So, if there is a business out there called "Blue Realty" which is distinctively and substantially exclusively known as such, then using "Blue Realty" for something else would be kind of like using "Air France" as a brand of shoes. Not only does it not make any sense, but it is obvious that using "Air France" to sell shoes simply comes across as a shoddy attempt to make the ridiculous claim that you are not intending to evoke the goodwill and reputation of the airline for your shoe business.
 
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So, if there is a business out there called "Blue Realty" which is distinctively and substantially exclusively known as such, then using "Blue Realty" for something else would be kind of like using "Air France" as a brand of shoes. Not only does it not make any sense, but it is obvious that using "Air France" to sell shoes simply comes across as a shoddy attempt to make the ridiculous claim that you are not intending to evoke the goodwill and reputation of the airline for your shoe business.

Thanks for the detailed response.
 
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I have been thinking about.
I just want to understand more.

The GTLDs have added a bit if a confusion.

Now Qualcom is a trademark.

Does that mean they can win in a case against someone who has Qual.com?

Has there been any precedence?

Qualcom.com I understand, but Qual.com can argue that they are named Qual.

Just want to understand this more.
 
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Has there been any precedence?

Yes, 20 year's worth.

Here's a case from 2000:

https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0008.html

"5.4 The Complainant asserts that confusing similarity exists between its trade mark "SIXNET" as registered in the United States and Canada and the domain names "SIXNET.COM" and "SIX.NET". The Respondent denies this on the basis that only the word "SIX" could be protected by a trade mark and that .NET is merely the classification of the purpose for which the domain name is being used. The Panel cannot accept the Respondents argument. The Respondents domain names are clearly confusingly similar to the Complainants trade marks "SIXNET"."

That claim was denied on other parts of the policy, but if the question is "Does 'SIX.NET' look like 'SIXNET'?" I don't see how anyone comes up with an answer other than yes.

If someone registered WAL.MART, a panel would not seriously consider an argument that it doesn't look like WAL-MART. Obviously, it does.

Here's a case from 2009 involving the domain name PROJECT.ME and the mark "PROJECT ME":

https://www.wipo.int/amc/en/domains/decisions/html/2009/dme2009-0008.html

When considering the issue of identicalness or similarity of a disputed domain name to the complainant's trademark, previous panel decisions under the UDRP for the ccTLD .me have ignored the TLD identifier – that is, they have undertaken the comparison using only that part of the domain name that precedes the “.me” suffix. An example is Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007, in which it was stated: “the addition of the ccTLD “.me” is without legal significance from the standpoint of comparing the Domain Name to the [trademark] because use of a ccTLD (or gTLD) is required of domain name registrants, “.me” is one of only a few such ccTLD's, and “.me” does not serve to identify a specific enterprise as a source of goods or services”.


If that approach were to be adopted in this case, the relevant part of the disputed domain name would be “project”, and the question would be whether “project” is identical or confusingly similar to the Complainant's trademark PROJECT.ME. For the reasons given below, however, this Panel does not need to decide that question here.


This Panel considers that the appropriate approach in this case to determining identicalness or similarity of the disputed .me domain name with the Complainant's trademark is to not ignore the ccTLD identifier “.me”. The reality is that, unlike most ccTLD identifiers, the TLD identifier “.me” can be seen to have a meaning beyond being the International Standards Organization (ISO) two-letter code for the country Montenegro – in particular, it has the additional meaning of being the common English objective pronoun for oneself. This fact is well understood by doMEn, the Registry for the .me ccTLD, which promotes .me registrations by stating “.ME is expected to be utilized as both a personalized Web address and as a catchy business marketing tool around the world … So some “premium” names – including verb-oriented domains, such as “Contact.ME,” “Drive.ME” or “Fly.ME,” – will be held back for auction after Open Registration.” In this Panel's opinion, to ignore the ccTLD identifier in all cases when considering identicalness or similarity of a .me domain name to a trademark is to ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of the domain name. Thus, it is this Panel's view that a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.


Adopting that approach in this case, this Panel finds that the disputed domain name <project.me> is identical to the Complainant's trademark PROJECT.ME.


As I frequently point out here, most of the questions asked in the legal section of Namepros are answered in the WIPO UDRP FAQ:

https://www.wipo.int/amc/en/domains/search/overview3.0/#item111

1.11 Is the Top Level Domain relevant in determining identity or confusing similarity?

1.11.3 Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a mark “TRADEMARK”, the domain name <trade.mark> would be confusingly similar for UDRP standing purposes).

And the WIPO FAQ includes these cases. Look at the domain names:

project.me GmbH v. Alan Lin, WIPO Case No. DME2009-0008, <project.me>, Denied

Banco Bradesco S/A v. Paulo Araujo, WIPO Case No. DCO2010-0049, <brades.co>, Transfer

Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017, <tes.co>, Transfer

Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269, <zionsbank.holdings>, Transfer

Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Case No. D2014-1747, <fifthstreet.finance>, Transfer

Bayerische Motoren Werke AG v. Masakazu/Living By Blue Co., Ltd., WIPO Case No. DMW2015-0001, <b.mw>, Transfer

Totaljobs Group Limited v. Faisal Khan, CreativeMode Ltd, WIPO Case No. D2017-0295, <total.jobs>, Transfer

At World Properties, LLC v. Whois Agent, WHOIS PRIVACY PROTECTION SERVICES, INC. / Whois Agent, PROFILE GROUP, WIPO Case No. D2016-0440, <at.properties>, Denied

WeWork Companies, Inc. v. Michael Chiriac, Various Concepts Inc., WIPO Case No. D2016-1817, <joinwe.work> et al., Transfer

Swarovski Aktiengesellschaft v. Aprensa UG haftungsbeschraenkt, Mike Koefer, WIPO Verfahren Nr. D2016-2036, <swarov.ski>, Transfer

Compagnie Générale des Etablissements Michelin v. Pacharapatr W., WIPO Case No. D2016-2465, <tyre.plus>, Transfer
 
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Oh My.....
Thanks then :)
I won't bid on that domain ...
 
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