Common names domain trademark

[Chieff]

Hi,

I recently came across this interesting issue

Lets say Mr. A have an online store that sells pink shoes and trademarked domain name sells at pinkshoes.com

Mr. B register pinkshoe.com and setting up an online store to sell shoes

Does this violates the trademark policy?

 

[ravidesai]

I don't thing that it will violates the trademark policy.

 

[jberryhill]

Lets say Mr. A have an online store that sells pink shoes and trademarked domain name sells at pinkshoes.com

In the US, it would be highly unlikely for Mr. A to obtain trademark rights in "pinkshoes.com" for selling pink shoes, since that is a descriptive term for the goods he sells. If Mr. A has spent many years engaged in massive advertising such that he has obtained widespread consumer recognition for "pinkshoes.com" referring to a brand of service and not merely as an internet website selling pink shoes, then he might have a chance, but it would require a substantial degree of evidence of widespread recognition. That was the point of the recent Booking.com decision.

But, to be clear, it is unlikely that Mr. A would have trademark rights for that purpose absent a very high degree of consumer recognition. Taking the hypothetical as stated, then that exact hight degree of consumer recognition and strong association with pinkshoes.com would be the very reason why Mr. B would be presumed to likely know of Mr. A's rights.

Those are the general considerations. Any real-world situation like this would require a review of the relevant facts concerning the extent of the reputation of the mark.

As is typical for namepros, the question fails to provide information about the strength and reputation of a mark, which would be critical to evaluating any actual problem on the specific facts at hand.

 

[Chieff]

@jberryhill Thanks for valuable opinion


Consider this scenario A selling headphones at headphones.com (or any ccTLD like headphones.ca)

If B want to sell headphones at headphone.com (using same domain extension as A / headphone.ca)

Does it cause any legal issue against B?

Does registering domain in bad faith or confusing similar name as per UDRP applies here?

Since the domain name is made of commonly used words and generic right?

Thanks

 

[jberryhill]

@jberryhill Thanks for valuable opinion


Consider this scenario A selling headphones at headphones.com (or any ccTLD like headphones.ca)

If B want to sell headphones at headphone.com (using same domain extension as A / headphone.ca)

Does it cause any legal issue against B?

Does registering domain in bad faith or confusing similar name as per UDRP applies here?

Since the domain name is made of commonly used words and generic right?

Thanks

It would really depend on the specific facts, and we would have to know a lot more about the reputation of “headphones.com”. As you may know, Booking.com received recognition in the US as a mark based, in part, on having spent millions on advertising over more than a decade of establishing the reputation of their brand. This was backed up by consumer survey evidence showing that “Booking.com” was perceived as their service in particular, and not just an address for a booking website.

A LOT of evidence is needed to establish a mark like that. The scope of the mark like that is still something of an open question. But the “small differences matter” principle of descriptive marks definitely applies.

 

[Chieff]

It would really depend on the specific facts, and we would have to know a lot more about the reputation of “headphones.com”. As you may know, Booking.com received recognition in the US as a mark based, in part, on having spent millions on advertising over more than a decade of establishing the reputation of their brand. This was backed up by consumer survey evidence showing that “Booking.com” was perceived as their service in particular, and not just an address for a booking website.

A LOT of evidence is needed to establish a mark like that. The scope of the mark like that is still something of an open question. But the “small differences matter” principle of descriptive marks definitely applies.

@jberryhill Thanks a lot for explaining in detail

If you have time check PM I have send the domain name, confused why it got trademark