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

[maurixius]

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.

 

[maurixius]

Thank you all for your examples and info. I appreciate the arguments and enjoy all the read. Its good learning material for people like me with lesser experience. Even though the extension is taken; I got a good lesson out of this thread.

 

[jberryhill]

If a legitimate site was running there titled.... "Trade with Mark"...

The UDRP requires all three elements.

However, if someone registers, say, Wal.Mart, then to say that "Wal.Mart" is not confusingly similar to Wal-Mart, is just silly.

This isn't new. One of the very early UDRP cases involved the domain name Six.net and the trademark "SIXNET".

http://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”.”

Was the domain name similar to the mark? Yes. Did the Complainant win? No.

So, taking a look at what you said... "If a legitimate site was running there..."

Well "if a legitimate site as running there..." as a preamble to a UDRP question is itself an answer to the question, considering that "legitimate rights and interests" is the second element of the UDRP. It doesn't much matter what the domain name might be "if a legitimate site is running there" unless we are talking about what is more of a fig leaf concocted to masquerade as a legitimate site.

 

[frostify]

It is absolutely a trademark violation and they could without hesitation pursue legal action with a near 100% chance of forcefully taking the name and/or pursuing further action. I would strongly advise against registering/purchasing/acquiring the name.

 

[StartupsBrandsCom]

Hello, I have a serious doubts in two above references that are actually explaining intellectually protected a general word numeral noun, IMO that could not play the purpose of business name protection without some other public rights infringement, except if the NAME is considered with the all technical specification(classes) as capitalized typing and use that is making sort of extraordinary form(of general use words) and applicable as intellectual excellence/exception and protected.
As I've suggested in my previous post, regulations are improving over time globally, mostly in better formal determinations, and there could be that example case provided above would not stand on some arbitrages in present time.

--
Number Of Domain Names Worldwide: 342.4 Million, .Com Accounts For 40%
--
So domain names as commercial service/product with such huge commercial importance should not be subject of confiscation/taking over possession, as those protection conduct are more up the license holders(pro-active business actions) and regulatory - the registrars, prior entrepreneurship "advantage" arise at the new end users.

 

[StartupsBrandsCom]

Particularly in the example the respondent(attorney) statement should be terminated, dismissed as legally inadequate and ordered a new attorney install on the mentioned UDRP trial.

The Respondent denies this on the basis that only the word “SIX” could be protected by a trade mark

 

[MadAboutDomains]

@Nik Pantic I may be being stupid, but I'm not sure about the point you're trying to make, perhaps you could explain it in simpler terms?

The name SIX.NET wasn't transferred as a result of the UDRP, but the domain name was determined to be identical or confusingly similar to the complainants trademark SIXNET.

 

[cipcip]

Not true.

https://euipo.europa.eu/eSearch/#details/trademarks/003565348
https://en.wikipedia.org/wiki/Best_Buy_Europe

Please try again.

It's the same as owning apple.something - you can own an apple juice farm and sell the juice, you will be safe as long as you do not do a website that mimic apple or apple products.

 

[MadAboutDomains]

It's the same as owning apple.something - you can own an apple juice farm and sell the juice, you will be safe as long as you do not do a website that mimic apple or apple products.

Indeed. There are many legitimate uses and many ways to mitigate the likelihood of the name being taken from you. As I eluded to in this post. But going in blind and saying it's fine because I could have an apple juice farm is only useful if you have an apple juice farm.

 

[dande]

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.

No... The answer can't be "Yes" in this regard.

What he is registering is "Best" while "Buy" is the domain extension. Unless BestBuy has trademarked the word "Best".

If you think BestBuy could lay claim on "Best", they'd as well claim the entire "Buy" extension and hold the registry on UDRP.

 

[MadAboutDomains]

No... The answer can't be "Yes" in this regard.

What he is registering is "Best" while "Buy" is the domain extension. Unless BestBuy has trademarked the word "Best".

If you think BestBuy could lay claim on "Best", they'd as well claim the entire "Buy" extension and hold the registry on UDRP.

‍♂ Please read the thread...

 

[dande]

‍♂ Please read the thread...

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”.”

Was the domain name similar to the mark? Yes. Did the Complainant win? No.

 

[MadAboutDomains]

They won because they were able to prove that they used the domain SIX.NET legitimately along with SIXNET.COM. If they hadn't been able to, the name might have been at risk.

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

The point I'm trying to make is that you must keep it in mind in case a UDRP arises because of your registration if your name + extension = a registered trademark.

We've already established that a complainant can establish the first element of UDRP for a name like SIX.NET, @jberryhill gave plenty of examples where this is the case. If you can't defend yourself against one of the other two elements then you may well have your name transferred.

 

[StartupsBrandsCom]

@
MadAboutDomains

@dande explained it, thank you.

 

[StartupsBrandsCom]

What he is registering is "Best" while "Buy" is the domain extension. Unless BestBuy has trademarked the word "Best".

If you think BestBuy could lay claim on "Best", they'd as well claim the entire "Buy" extension and hold the registry on UDRP.

 

[MapleDots]

If you think BestBuy could lay claim on "Best", they'd as well claim the entire "Buy" extension and hold the registry on UDRP.

At this point I have decided to go ahead and trademark the "dot"

You know the "." between the words.

I'm hiring @jberryhill to represent me

Everyone get ready for the mother of all UDRP's

 

[StartupsBrandsCom]

Okay, to add one more example, in my country during former status and past cCTDL - domain names registrations were restricted from general public to institutions and business entities that use to had to apply with an organization / company registration license proving the name ownership legal eligibility for any specific domain names.
That domain registry regulation ended in 2007/8.
It was .co.yu, submitted through postal mail and free of cost if I remember correct.

 

[dande]

At this point I have decided to go ahead and trademark the "dot"

You know the "." between the words.

I'm hiring @jberryhill to represent me

Everyone get ready for the mother of all UDRP's

You better do. Everyone is trademarking everything these days

Me. I'll trademark the trademark

 

[bmugford]

This is definitely not a domain I would really want to mess with personally.

I can't imagine a big end user putting lots of resources into this domain with the obvious "Best Buy" out there as a potential issue.

Brad

 

[MadAboutDomains]

You better do. Everyone is trademarking everything these days

Me. I'll trademark the trademark

There's literally nothing wrong with doing that, it's already a trademark in the USA.

If you do, don't forget to use it in trade within the first 3 years, if you don't do that, anyone can petition to cancel it for a few hundred dollars and have it revoked for non-use. No proof, no trademark rights, no legitimate rights, no protection .

The theme is the same...

 

[toughdomains]

BB has bigger issues than claiming a .buy domain..
like this juggernaut
https://www.cnbc.com/2018/07/12/ama...ent-of-us-e-commerce-market-by-years-end.html

 

[bynps]

wi.com vs wicom

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1470

 

[MadAboutDomains]

wi.com vs wicom

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1470

Interesting case. As discussed, they made a finding on the first element that it was confusingly similar. But the case fell apart because they couldn't prove that the actual domain owner was contacting the complainant.

 

[bynps]

Interesting case. As discussed, they made a finding on the first element that it was confusingly similar. But the case fell apart because they couldn't prove that the actual domain owner was contacting the complainant.

They claimed even if they could prove, it wouldn't have mattered. Thoughts?

 

[MadAboutDomains]

They claimed even if they could prove, it wouldn't have mattered. Thoughts?

I can't see that in the text, but what they were able to establish was that the domain was acquired as part of a legitimate business transaction that was conducted by them on behalf of someone else, hence legitimising the ownership of the name... No evidence of bad faith registration.

 

[jberryhill]

They claimed even if they could prove, it wouldn't have mattered. Thoughts?

Because WI.com is otherwise a two-letter .com domain name, with incidental resemblance to the "WICOM" mark, but certainly useful for a lot of other stuff. Also "WICOM" is not nearly as well-known a mark as "Best Buy".

Use some common sense, folks. What is a domain name like "Best.Buy" going to be used for? What is anyone going to think when they see a domain name like "Wal.Mart"?

These things tend to be fact dependent. It is unfortunate that domainers in general don't recognize that not all trademarks are the same. Some are inherently distinctive and some aren't. Some are well-known and some aren't, etc.. In assessing objective indications of someone's intent, there's a lot more that goes into the mix.