Domain Trademark Debate

[The Rover]

I recently found myself in the middle of a debate with a business colleague as to whether a particular domain name was infringing on a trademark. The argument was that the term or phrase "Web Pro" in and of itself is a registered trademark. The domain in question is something like WebProxxxxxxxxx.com. My firm stance is that "Web Pro" or "Web Pros" are such old, generic phrases that a domain using these phrases with another generic keyword would not violate any trademarks. However, my colleague strongly disagrees and insists that any domain using webpro<insert keyword here>.com would be an infringement. I told him to simply do a google search, and he should quickly discover that there are dozens and dozens of established companies using the phrase "Web Pro" or "Web Pros"

Anyone here have a different opinion?

 

[Name Trader]

It's not the domain per se which is infringing on a persons trademark, it's the content on it's web pages. You can use a domain such as webprooranges.com, if the content is about oranges and not infringing on any trademarks.

 

[The Rover]

I tried explaining that very point to him. However, he's basically saying that "Web Pro" in and of itself is a trademark. So for example, if someone decides to name their company WebProKangarooDesigners.com that it would be violating a trademark of WebPro.com, or WebProNews.com etc..

It's not the domain per se which is infringing on a persons trademark, it's the content on it's web pages. You can use a domain such as webprooranges.com, if the content is about oranges and not infringing on any trademarks.

 

[bmugford]

However, my colleague strongly disagrees and insists that any domain using webpro<insert keyword here>.com would be an infringement. I told him to simply do a google search, and he should quickly discover that there are dozens and dozens of established companies using the phrase "Web Pro" or "Web Pros"

Anyone here have a different opinion?

He is wrong. TM protection only goes so far.

TM = Trade (what you do) + Mark (name you do it under).

There can be hundreds or thousands of companies using the same mark for similar or different uses.

There is a difference between just having a TM and having an enforceable distinctive TM.

Brad

 

[WordWalker]

I recently found myself in the middle of a debate with a business colleague as to whether a particular domain name was infringing on a trademark. The argument was that the term or phrase "Web Pro" in and of itself is a registered trademark. The domain in question is something like WebProxxxxxxxxx.com. My firm stance is that "Web Pro" or "Web Pros" are such old, generic phrases that a domain using these phrases with another generic keyword would not violate any trademarks. However, my colleague strongly disagrees and insists that any domain using webpro<insert keyword here>.com would be an infringement. I told him to simply do a google search, and he should quickly discover that there are dozens and dozens of established companies using the phrase "Web Pro" or "Web Pros"

Anyone here have a different opinion?

Perhaps THIS LINK would be helpful!

.

 

[The Rover]

He is wrong. TM protection only goes so far.

TM = Trade (what you do) + Mark (name you do it under).

There can be hundreds or thousands of companies using the same mark for similar or different uses.

There is a difference between just having a TM and having an enforceable distinctive TM.

Brad

Agreed. Furthermore, even if WebPro has a trademark in the design industry, if someone actually started a web design business under the name WebProKangarooDesigners.com, despite the fact that WebPro.com is in the same exact business, I seriously doubt any enforcement would ever occur for using the term WebPro.

 

[alien51]

These kind of stuffs, are always debatable. When you say "debatable", it means an offended party that has interest on it can always file a lawsuit to put the issue to rest, because it doesn't make sense to argue about it forever. You want a Judge to finish it off.

Normally, rulings on such cases are about whether the "brand" or domain you picked will result to CONFUSION among the target audience of one party who got the name first.

You can practice this yourself. Try to imagine yourself as a regular consumer. If it is difficult for you to tell which one is which, then you'll have a trademark issue.

And besides, i don't think a trademark would have been granted on a name that is generic in nature in the first place. So if somebody has been granted a trademark on something you think is generic in nature, then you have no choice but to avoid the business he is in if you will use the same name.

For example, you can pick "Shell" as your brand (a generic term). But you cannot go into the oil/petroleum business.

 

[Name Trader]

@alien51 - I was kind of shocked when I couldn't find Shell's TM in either the US or European databases. I searched on USPTO.GOV and TRADEMARKIA.COM

@The Rover - In your example, I think there would be a good chance that WebPro.com would have a good UDRP case against WebProKangarooDesigners.com, and would most likely win. Provided they were infringing on their TM.

 

[The Rover]

If that's the case then they better get busy! There's quite a few design and development companies using "web pro" in their name.

@The Rover - In your example, I think there would be a good chance that WebPro.com would have a good UDRP case against WebProKangarooDesigners.com, and would most likely win. Provided they were infringing on their TM.

 

[lincolndsp]

WebPro

As long as you use webpro for some web services, which is a descriptive use for it - trademark cannot stop you from this.

If you trademark WebPro for industrial glue - then it becomes destinctive and you can stop somebody from infringing on it.

that's like you can trademark the logo for cars.com but in reality nobody sues mycars.com for example even if the logo looks similar, or toyotacars.com - common sense 101

 

[alien51]

@alien51 - I was kind of shocked when I couldn't find Shell's TM in either the US or European databases. I searched on USPTO.GOV and TRADEMARKIA.COM

Check here:
https://register.boip.int/bmbonline/search/results/show.do?pager.offset=20

Shell brand licensing thru its subsidiary Shell Brands International AG:
http://investing.businessweek.com/research/stocks/private/snapshot.asp?privcapid=105703423


Here's an interesting WIPO case involving Shell:
http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0538.html

Another link about Shell trademark battle as entered in Wikipedia:
http://en.wikipedia.org/wiki/Royaldutchshellplc.com

I quote what was mentioned here:
"While Royal Dutch Shell plc is a trademarked name of the company, the domain name was first registered by Alfred Donovan. It avoids being an illegal cybersquatter as long as it is non-commercial, active, and no attempt are made to sell the domain name, as determined by WIPO proceedings"

 

[Name Trader]

I coudn't do anything on the first site because it was in dutch. Nothing appeared to work.

the 2nd site was only of tangential interest.

the 3rd site was illuminating. The RDS Lawyers were not as good as they should have been, imho. I think the decision was, on the whole, correct. Tough decision for RDS.

The 4th site is inaccurate unless Royal Dutch Shell PLC actually obtained a trademark sometime after their WIPO case.

It just goes to show that you should register your domain names before announcing your change of business names.

 

[alien51]

I coudn't do anything on the first site because it was in dutch. Nothing appeared to work.

the 2nd site was only of tangential interest.

the 3rd site was illuminating. The RDS Lawyers were not as good as they should have been, imho. I think the decision was, on the whole, correct. Tough decision for RDS.

The 4th site is inaccurate unless Royal Dutch Shell PLC actually obtained a trademark sometime after their WIPO case.

It just goes to show that you should register your domain names before announcing your change of business names.

I think "commercial use" motive, is a deciding factor in many cases. That would disqualify Domainers and businessmen alike.

And also, if you are using generic word combinations, i think you would need to prove that you are well known to be using such brand to fend off others who use the same brand.

I own a generic 2-word dictionary dot com where i refused to sell it to an End-User who tried to lowball me. What he did was he trademarked the 2-word domain as his company name and took the .NET extension for his website for just reg fee.

 

[Dave_Z]

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2208838

http://www.inta.org/TrademarkBasics/FactSheets/Pages/ConsiderationsSelectingTrademarkFactSheet.aspx