trademark Domain trademark help needed?

[Sumeeth]

I had bought 1 .restaurant domain recently and after few days i got an email from one guy who is the owner of .com domain of same domain name and they are saying that your domain is a exact trademark of them so you don't have rights or legitimate interests .restaurant domain so handover that domain to us.

When i searched the domain name in trademark site and got to know that it is Trademarked for UK region only.

Can you please suggest can't we buy domain of different extension of .com domain which is trademarked (in particular region)

 

[karmaco]

If you can still cancel it I would. Each register has a period of time you can cancel a purchase typically 3 to 5 days max. Did/does the parked page have ads to that company ? If so that’s how they found you so fast.

 

[boker]

If you can still cancel it I would. Each register has a period of time you can cancel a purchase typically 3 to 5 days max. Did/does the parked page have ads to that company ? If so that’s how they found you so fast.

You can't just drop a domain because it has one trademark for one industry and for a certain region. I have main dictionary words with over 100 trademarks, that's doesn't mean that it can not be used by others in other parts of the words or in the same country, but different industry. Also, it's very hard to get trademark right for a product in every corner of the world, because you need to prove that peoples from that area recognize the brand. I have domains which are trademarked for the same industry in US, other in Belgium, other in Turkey, other in Australia and one other in Singapore. Each of them have trademark rights for they own area and they can't go demanding TM rights in the other areas where already somebody is using the same words. Also, I have domains trademarked in US for financial sector, TM rights for other sector owned by other company, still in US but different industry and the same words used in China by other company in the financial sector. So, it's very complicated and there are 1000's situations regarding TM rights, just if you have something like CocaCola.restaurants it should be dropped, where the TM is evident.

 

[Sumeeth]

You can't just drop a domain because it has one trademark for one industry and for a certain region. I have main dictionary words with over 100 trademarks, that's doesn't mean that it can not be used by others in other parts of the words or in the same country, but different industry. Also, it's very hard to get trademark right for a product in every corner of the world, because you need to prove that peoples from that area recognize the brand. I have domains which are trademarked for the same industry in US, other in Belgium, other in Turkey, other in Australia and one other in Singapore. Each of them have trademark rights for they own area and they can't go demanding TM rights in the other areas where already somebody is using the same words. Also, I have domains trademarked in US for financial sector, TM rights for other sector owned by other company, still in US but different industry and the same words used in China by other company in the financial sector. So, it's very complicated and there are 1000's situations regarding TM rights, just if you have something like CocaCola.restaurants it should be dropped, where the TM is evident.

Thanks for the reply. their .com & trademarked word is related to restaurant and mine is with same name but .restaurant domain. Say for example,

say UrbanHotels.com is their domain and they have trademark for "Urban Hotels" already and also they are the owner of UrbanHotels.com domain.

Domain which i bought is UrbanHotels.restaurant.

Can you please suggest if it illegal to buy UrbanHotels.restaurant.?

 

[boker]

Thanks for the reply. their .com & trademarked word is related to restaurant and mine is with same name but .restaurant domain. Say for example,

say UrbanHotels.com is their domain and they have trademark for "Urban Hotels" already and also they are the owner of UrbanHotels.com domain.

Domain which i bought is UrbanHotels.restaurant.

Can you please suggest if it illegal to buy UrbanHotels.restaurant.?

If you can't know the exact word to do some research is hard. If it's a general dictionary word, let's say AppleRestaurant.com and Apple.Restaurant, you should be safe, but if it's something invented pr two particular words, than it's more complicated. Also, depends if they have multiple restaurants in different parts of the world or just one in UK.

 

[Dominique]

I had bought 1 .restaurant domain recently and after few days i got an email from one guy who is the owner of .com domain of same domain name and they are saying that your domain is a exact trademark of them so you don't have rights or legitimate interests .restaurant domain so handover that domain to us.

When i searched the domain name in trademark site and got to know that it is Trademarked for UK region only.

Can you please suggest can't we buy domain of different extension of .com domain which is trademarked (in particular region)

First of all, in order to get better insight of your case, please read Wipo Overview 3.0,
specifically under the 1.11 (1.11.2. !) and 3.2.2 !
http://www.wipo.int/amc/en/domains/search/overview3.0/

And forget about a geographic locations and regions for a while, because it is relevant only in relation to and under the third element (registering and using in bad faith) of the UDRP.

 

[Kate]

Can you please suggest can't we buy domain of different extension of .com domain which is trademarked (in particular region)

Were you aware the name was TMed before you registered it ? If you were, then you sure had an compelling reason for buying the name anyway, what was it ? It all boils down to intent and legitimate use.

 

[BaileyUK]

Yes I agree with Kate, it reads to me as if you've purposefully registered a domain in the .restaurant extension knowing full well it was a branded food company/chain. if so you best get yourself updated with TradeMark law ASAP. before you pull another stunt

 

[boker]

Yes I agree with Kate, it reads to me as if you've purposefully registered a domain in the .restaurant extension knowing full well it was a branded food company/chain. if so you best get yourself updated with TradeMark law ASAP. before you pull another stunt

I've seen the domain he registered and probably he had in mind a company active in UK hotels market and it will probably be hard to sell it to somebody else. In the same time, it will be hard to prove that they have any rights outside UK, because nobody knows that name outside UK used by a hotel chain so it will be hard to impose to somebody else not to use it for hotels or anything else. Like, if they would use something like GardenHotels, it will be hard to stop another hotel to use GardenHotels.cn GardenHotels.co or others, they have a small chance just with a gtld, because they are under ICANN rule.

 

[BaileyUK]

Well done on the clarification Boker but as you mention 'motivation and purpose' go a long way to defeat domain registrants when it comes to Challenges. - So not easy to play the unknowing and innocent registrant these days. Due diligence etc, particularly with all the resources to clarify a standing pretty much free on the internet these days.
Lets not forget a company with TM's has an Obligation to defend its Marks, If it doesn't do so they can be used as examples to overrule any subsequent challenge

 

[boker]

Well done on the clarification Boker but as you mention 'motivation and purpose' go a long way to defeat domain registrants when it come s to Challenges. - So not easy to play the unknowing and innocent registrant these days. Due diligence etc, particularly with all the resources to clarify a standing pretty much free on the internet these days.
lets not forget a company with TM's has an Obligation to defend its Marks, If it doesn't do so they can be used as examples to overrule any subsequent challenge

Yes, but it's a little bit aggressive for them to ask him to drop the name after a few days, when they even didn't knew for what it will be used. I think that they don't want other hotels to use that name, but I think that this will be hard to impose this to everybody outside UK. What if the name will be used by a hotel in China, they will try to stop them to use it? Regarding cctlds, it will be hard to impose to usage of a name to anybody, because ICANN can't force them to not use it and in same time, local civil courts will have priority over national organisation controlling the cctld, so it will take 3-5-10 years just to force a local company not to use it. BMW, Volvo, Paypal, they can do this because they have time and money and they are used all over the world, but to force a local hotel to not use GardenHotels.cctld it will be close to impossible.

 

[BaileyUK]

I agree with you on the ccltd front Boker. But, this example is in the dot.restaurant extension. I also believe you will find there is a European coverage element (and vis-à-vis) to UK trademarks, unless specifically excluded.

The simple answer is always common sense, with a understanding of the prevailing legalities of ownership. Both from a TM holder and domain registrant. If the example given is defensible it will show in the registrants history and intention of usage ie, for a local, country specific market only etc or other defensible. I would say It is advisable to respond if the challenge comes from a legal entity and not ignore in the hope it goes away

 

[boker]

I agree with you on the ccltd front Boker. But, this example is in the dot.restaurant extension. I also believe you will find there is a European coverage element (and vis-à-vis) to UK trademarks, unless pacifically excluded

There is an EU agreement, but that's between the org. controlling each cctld, if a local judge will not have the same opinion with them, he will impose his opinion.

 

[BaileyUK]

Boker, Legalities always make for a great debate and your right nobody here can preempt a courts or indeed subsequent appeal decisions etc. But why go down that road as a domain investor. Unless of course the domain registrant has already invested good time and money in that enterprise.

I will add there are plenty of Businesses and Companies out there that chance there arm when it comes to challenging a domain holders rights to a registration. But I think we both would agree this doesn't appear (from the outside) to be one of them. Taking into account the TM holders obligations to defend

 

[wwwweb]

Thanks for the reply. their .com & trademarked word is related to restaurant and mine is with same name but .restaurant domain. Say for example,

say UrbanHotels.com is their domain and they have trademark for "Urban Hotels" already and also they are the owner of UrbanHotels.com domain.

Domain which i bought is UrbanHotels.restaurant.

Can you please suggest if it illegal to buy UrbanHotels.restaurant.?

First off this is not the fight you want to pick if that is the quality level of your domain name, maybe, just maybe if it was Keyword.Restaurant, but KeywordKeyword.Restaurant is a horrible choice to continue this foolishness. I see you are from India where economies of scale are different when it comes to more affluent European regions. If they do bring action, do you have thousands of dollars saved away to fight for your newly registered two keyword GTLD?

Since I highly doubt that, why don't you focus on a better quality more generic domain, unless your intent was to flip it back to them.

You should just say I got some investment into this, and with transfer time, and efforts, how about I just surrender it to you for $100, and move on.

These if's, and but's are useless without the actual name.

 

[boker]

Boker, Legalities always make for a great debate and your right nobody here can preempt a courts or indeed subsequent appeal decisions etc. But why go down that road as a domain investor. Unless of course the domain registrant has already invested good time and money in that enterprise

I'm just saying, they have reacted to aggressive for what has been done, if they try to act as the 'big guys' and try to push everybody, they should learn that they can't get always what they want.

 

[ksusha64]

First off this is not the fight you want to pick if that is the quality level of your domain name, maybe, just maybe if it was Keyword.Restaurant, but KeywordKeyword.Restaurant is a horrible choice to continue this foolishness. I see you are from India where economies of scale are different when it comes to more affluent European regions. If they do bring action, do you have thousands of dollars saved away to fight for your newly registered two keyword GTLD?

Since I highly doubt that, why don't you focus on a better quality more generic domain, unless your intent was to flip it back to them.

You should just say I got some investment into this, and with transfer time, and efforts, how about I just surrender it to you for $100, and move on.

These if's, and but's are useless without the actual name.

Good advice. Lets be honest the name is worthless. If u can get $200 out of it you will be a big winner. They want your crap which is a good thing. Just give it to them for few hundred and never buy crap like this again.

 

[BaileyUK]

I'm just saying, they have reacted to aggressive for what has been done, if they try to act as the 'big guys' and try to push everybody, .

I'm sorry but I think your wrong - Please read into the legal responsibilities and ownership conditions of a Trade Mark registration Classes and the duties of a registrant. (they are pretty much similar through out the *Western world)

A trademark registrant can 'dilute' (my chosen word) his rights by not defending a knowing conflict of interest within the classes and coverage of that Mark.

* I must admit I don't read Chinese, Russian etc so I've admittedly limited my knowledge to the English Language speaking world.
*Please also Note these rights and obligations are also date relevant

 

[boker]

I'm sorry but I think your wrong - Please read into the legal responsibilities and ownership conditions of a Trade Mark registration Classes and the duties of a registrant. (they are pretty much similar through out the Western world)

A trademark registrant can 'dilute' (my chosen word) his rights by not defending a knowing conflict of interest within the classes and coverage of that Mark.

This is just theory...try to check the portofolios of the big domainers and you will find thousand of domains related to google, facebook and all the big brands and you can't see to many of them, taking them to court, but if they will try, they will not have any issues to prove their point and their rights are not diluted by the existence of thousands of domains infringing their TM rights. For example Mike Mann owns around 40 names just related to google, like: googleanalysis, googleoptimisation, googlegaming and others...do you think that google rights are diluted by these? I don't think so.

 

[BaileyUK]

I'm sorry but it is not just a theory do add to your knowledge it helps when you need to defend your own registrations - I must admit I've never gone on The Attack regarding a domain registration - so i'm not in a position to comment on google etc, i'm sure they would take action If they saw a genuine conflict of interest in their Marks.

I hope Nothing reads as personal in my comments but I did have the Good fortune to study Business Law for two years - so I'm pretty sure my law of contracts and Trade Mark knowledge is pretty much upto date

 

[NamesCost]

Are you in the region with the mark?

 

[jberryhill]

You can't just drop a domain because it has one trademark for one industry...

Yes, but it's a little bit aggressive for them to ask him to drop the name after a few days, when they even didn't knew for what it will be used.

For what possible use would one register a .restaurant domain name? To sell sporting goods? Online gaming? C'mon people.

I believe it is reasonable to anticipate that a .restaurant domain name is going to be used in some way relating to a restaurant.

 

[BaileyUK]

Wow , thanks for entering the Discussion Mr Berryhill. always nice for somebody who really knows (all) the Ropes to comment in a thread

 

[boker]

For what possible use would one register a .restaurant domain name? To sell sporting goods? Online gaming? C'mon people.

I believe it is reasonable to anticipate that a .restaurant domain name is going to be used in some way relating to a restaurant.

Yes, but the TM rights owners are a hotel chain, not a restaurant, related but not exactly the same. Also, they have rights just in UK and they are a small chain, a few hotels, nobody knows them outside UK, so it's hard to prove that somebody from China, South America or other corners of this world will know about them. Also, nothing will stop me to open a hotel in another corner of the world using that name, when the name is general and the TM is just for UK

 

[BaileyUK]

Personally I do think your missing the intentions and motivations of the domain registrant -Which is relevant. Without knowing the domain it's all pretty hypothetical anyway.

I'm just as good at 'understating' and 'overstating' my position as anyone - and I do think this may have crept into the registrants own position , just a little bit in the "I know/knew Nothing" category