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best.buy ... Trademark issues or in the clear?

Labeled as question in Legal Discussion started by maurixius, Apr 27, 2019.

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  1. maurixius

    maurixius Established Member

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    Hi all ... sorry for the click bait :)

    I was wondering if I could register best.buy if it was available without having any trademark issues as most people know bestbuy is a big electronics department store.
     
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  2. maurixius

    maurixius Established Member

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    hmm no way to delete the post ... i checked out a name on dofo.com it said it was available.
    when i went to register it on godaddy it said it was taken.
     
  3. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    To answer your question... Yes there are trademark issues. It's whether you mitigate those issues or not that is the important thing.
     
  4. MolaRam

    MolaRam Established Member

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    I don't see a trademark issue. Best Buy are two english words which people outside of USA don't even know of as being an electronics store.
     
  5. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    Last edited: Apr 27, 2019
  6. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    I have

    s h o p c o s t . c o

    I have always firmly stated that the .co is an extension and not part of the name. In this case the domain is shopcost as in shop for cost. The .co add value as in how it sounds but it is not part of the domain name itself.

    Best.Buy is the same. The extension is a separate matter and the two are separate issues. One is a domain and one is an extension. Arguing that both together are a trademark leaves a number of loopholes that a good domain lawyer should be able to defend against.

    It is interesting nonetheless and I would love to know if someone has successfully gotten a domain under UDRP where the extension and domain were considered the same and as part of the trademark.

    In my case I look at shopcost in the .co to be the same as in the .com or even .net.

    Just because of the way it looks does not mean it infringes but I would suppose the main issue would be how it is used.

    So back to the OP, the way best.buy would be used would probably be the biggest factor in BestBuy even initiating a UDRP or trademark claim.

    All that said if costco really wanted my domain I would probably not fight it, the $17 I put into the name would not motivate me to challenge it.

    @jberryhill would know much more about this and he is probably the person I would hire if I ever ran into an issue like this and I was gung-ho on hanging on to the domain.
     
  7. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    Your stated case is vastly different from the OP's question because of the way bestbuy-int used the domain.

    Plus anything in the EU is f*cked up to begin with. I would hate to do business of any kind in the EU, I swear a lot of the decisions are made by people with their heads so far up their asses that they've not seen daylight in decades.

    Disclaimer > the language above is not typical of my normal responses but it was the easiest way to show how passionate I am about the subject.
     
    Last edited: Apr 27, 2019
  8. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    See this case https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0440

    Trademark: @PROPERTIES
    Domain: at.properties

     
  9. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    I'm not sure what you mean. Can you elaborate? :shy:
     
  10. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    Again...

    Just because of one decision it does not mean all decisions will go in that direction. I did not read the case so I can't say how the domain was used and what initiated the process. Additionally we all know that these decisions will vary depending on who sits on the panel ad definitely on what legal representation you have to challenge it. Not all lawyers are the same when it comes to defending domains.

    Then there is always the number one reason people lose in UDRP's....

    The domain owner does not know when to shut up and seek legal counsel.
     
  11. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    They are in the consumer products business... that was probably a critical part because it is also what bestbuy does.

    Had the defendant been in the wholesale acquisition business of lets say.... dairy products or something then there is a chance the outcome could have gone another way.
     
  12. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    It's true that cases can go either way, but it's true that it is possible to establish "Identically or confusingly similar" for names where the trademark spans into the extension, but you said categorically that it was treated separately that's all :whistle:.

    Exactly, so that takes us back to my first post in this thread.
     
    Last edited: Apr 27, 2019
  13. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    HeHe.... The only thing I can categorically state on the subject is that I would take any legal advice on a forum with a mountain sized grain of salt and seek proper counsel. :xf.wink:
     
    Last edited: Apr 27, 2019
  14. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    I didn't give any legal advice to be fair, they just asked if there were any legal issues with registering the name best.buy and the answer is still yes. :bag:

    I'm sorry to be picky, but it sounded like you had already convinced yourself that there is no problem with your .co name with regards to TMs because you have always firmly stated that the .co is separate. You know now that it isn't necessarily true, just saying it doesn't make it true. If you had said that you have an established company called S h o p C o s t that trades in a class of products or services that you know said company doesn't sell or have registered rights in then that would have sounded more sensible.

    Turning a blind eye to things because we're not lawyers, ignoring reality or not bothering to learn from the evidence that is freely available to anyone on the internet isn't the best way imho.

    Just because I don't know all of the inns and outs as a lawyer should, I personally wouldn't go near a lawyer until I needed them. That's a sure fire way to lose money. Learning to fight like a lawyer is a whole different thing to taking logical steps to protect yourself based on what you know before you need to fight like a lawyer.

    Whether they are immediate issues is up for debate, but they're still issues:
    1. Potential for a lost domain through UDRP
    2. Potential litigation due to perceived trademark infringement
    3. Restrictions in being able to register a trademark of your own for the domain that you have. If you want to start a business with the domain Best.buy legitimately, you may well struggle to register your own trademark for your business, like in the case where these people tried to register "BestBuy" as a trademark in the EU (https://euipo.europa.eu/eSearch/#details/trademarks/007241409/opposition/001538829) and couldn't
    4. ...or something else?
    If you're able to fight like a lawyer then that's fine, until then these issues are issues!!
     
    Last edited: Apr 27, 2019
  15. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    I was not addressing my post to you giving advice in this topic, I was talking more about what I would personally do.

    I think you have given some solid advice here.

    Really my bad here, I think my use of the wink emoticon could have been misinterpreted.
     
    Last edited: Apr 27, 2019
  16. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    @MapleDots Sorry if it sounded like I went in a bit all guns blazing lol :woot:. I'm just having a discussion. It's a worthwhile one nonetheless.
     
  17. JayT

    JayT LIFESAVINGS.ONLINE VIP

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    Like first reply said, it's fine if you use it correctly. It would make a great coupon site or something. Heck you could have bestbuy.com and mitigate TM issues if developed in an unrelated way (to electronics store). But panel are just human, it can go any way in reality.

    The reason this example seems iffy is because it's so nice an exacting without the .com. It is BETTER than bestbuy.com. Sure a lot will disagree :p For this reason, it seems best buy should have rights, since it's so powerful.
     
    Last edited: Apr 27, 2019
  18. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    No problems here, I like good discussions

    As far as ShopCost goes of course if it was used to sell products at retail it could be problematic. But lets say it was a website discussing costs of products then it would be a legitimate use.

    Same goes with best.buy. If it was a website comparing prices on items to show what is the best buy then it could be argued it has legitimate use.

    Then again, I keep coming back to the fact that the end decision is highly dependent on who sits on the panel, what previous cases were similar, and how good was your legal representation.

    ALSO OF COURSE....

    What did you blab about on an open forum that could be used against you in the case :xf.laugh::xf.laugh::xf.laugh:
     
  19. frank-germany

    frank-germany F1lter.com xpired domain search engine Gold Account VIP

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    the problem with best.buy would be
    to find a usage
    that doesn't scratch on their multiple trademarks
    and still be able to operate a profitable business
     
  20. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    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
     
  21. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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

    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).
     
  22. hookbox

    hookbox Top Member VIP

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    It's already been proven in udrp's that the dot means nothing with trademarks.
     
  23. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    You would wonder though....

    If a legitimate site was running there titled.... "Trade with Mark" and it was used outside of the Trademark industry. Ie a website used to trade used tools or something.

    Trade with Mark = trade.mark

    So if I came to you with such a case would you advise to drop or challenge?
     
  24. MadAboutDomains

    MadAboutDomains Top Member VIP ★★★★★★★★★★

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    It completely depends on the circumstances. If the domain owner has a trademark or even trades under that name, then they can prove legitimate interests and the UDRP falls apart.
     
  25. Nik Pantic

    Nik Pantic Established Member

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    Hello, from my perspective and as above mentioned also, domain ownership is related to usage, and further to business name registration, intellectual property laws, and trademark protection, so it should function as follows, without experience to admit.
    -business names formed from general words/terms should be available free to public but with restriction of specific phrased business name per business industry activity/class
    Example it would be accepted to register business name "best buy int" and "best buy inc" but not "best buy int inc".
    -similar should go with a trade mark registration: "best buy candies" and "best buy candy shop" but not "best buy candies shop".

    See the attachment as prove to your specific situation.
    1-Companies
    Companies  Names  registrar.png

    2-Trade marks

    Trade Mark registrar.png
    Also for this remark
    -it true that during extensive aspects EU regulations seems more complicated bureaucracy but that is, after following modern USA and CA laws, as affirmative further, so EU is implementing their multilateral legislature to accommodate member nations regulations into unified system.
     
    Last edited: Apr 29, 2019

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