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)

 

[Dominique]

He registered a domain, the thing regarding the hotel was an example

Ok, he doesnt have right or legitimate interest in that domain name.
We can go back to "bad faith registering and use".

that they can't demand TM rights to anybody outside UK, without asking what he wants to do with it. The idea is that they even didn't waited long enough to see what he wants to do

They dont need to wait. They dont need to ask anything.

a few days after he registered the name( was a landing page at godaddy without ads),

Its good for him there are no ads, ppc links or references to a respondents business.


And one more thing related to this:
Wipo Overview 3.0 (3.2.3; Willful blindness):
"panels have however found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; depending on the facts and circumstances of a case, this concept has been applied irrespective of whether the registrant is a professional domainer."

 

[boker]

I have to say, I do wonder why some of us lay-preachers in legal matters get tied-up in these sort of legal discussions. I doubt many have the financial means or indeed motivation to really fight domain cases If it came down to the Balance-of-probabilities on the outcome. Different if your defending a business enterprise that's taken time, money and effort.
We are talking about a ten dollar registration from a couple of days ago. Hardly worth blowing a fuse over

We are talking just about the fact and I don't think is necessary to spend millions to defend yourself in a UDRP, you could do it yourself, without hiring a lawyer in some cases. Also, it's not about the 10$ registration fee, it's about if they have the right to do it or not, if nobody will fight them, soon all the medium-big companies will start asking all the domains they want through UDRP just because maybe they are connected in any way to them. Also, cctlds are even easier to defend, I don't know in other places, but in my country it cost like 50$ to move the process in civil courts without paying a lawyer and after that it takes years to reach an end and there are big chances that they will loose there.

 

[Dominique]

I have to say, I do wonder why some of us lay-preachers in legal matters get tied-up in these sort of legal discussions. I doubt many have the financial means or indeed motivation to really fight domain cases If it came down to the Balance-of-probabilities on the outcome. Different if your defending a business enterprise that's taken time, money and effort.
We are talking about a ten dollar registration from a couple of days ago. Hardly worth blowing a fuse over

I agree. Often its just because of Ego.

 

[BaileyUK]

Some good reference material there Dominique but, somehow after all these posts I don't think any of us are going to convince or persuade Boker from his fighting talk. Each to our own and best of luck to him but somehow I can't see any off us changing his opinion

 

[Dominique]

Some good reference material there Dominique but, somehow after all these posts I don't think any of us are going to convince or persuade Boker from his fighting talk. Each to our own and good luck to him but somehow I can't see any off us changing his opinion

Im not trying to convince anyone of anything.
I like to talk about law. Its my proffesion.

All in all, I think Im done here because I dont want to make unnecessary attention to Mr. @Sumeeth.

Have a nice day !

 

[boker]

Ok, he doesnt have right or legitimate interest in that domain name.
We can go back to "bad faith registering and use".
They dont need to wait. They dont need to ask anything.
Its good for him there are no ads, ppc links or references to a respondents business.


And one more thing related to this:
Wipo Overview 3.0 (3.2.3; Willful blindness):
"panels have however found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; depending on the facts and circumstances of a case, this concept has been applied irrespective of whether the registrant is a professional domainer."

I was supposing that he's not one of the owners of the other hotels, I don't know, the fact is that neither they didn't knew, but still assumed that they have rights over him. How could you prove bad faith if you waited two days after it was registered, he could use it for some restaurants aggregator or something similar. It's the complainant job to show bad faith, not the respondent, how can you prove bad faith when you don't know who he is and what his intentions are.

 

[boker]

Some good reference material there Dominique but, somehow after all these posts I don't think any of us are going to convince or persuade Boker from his fighting talk. Each to our own and best of luck to him but somehow I can't see any off us changing his opinion

I don't want to convince you of anything and probably you will not convince me, but by talking I can see other points and gain some experience. Also, I said it before, if he doesn't want to keep it, he can give it to me, I don't have anything to loose and I will gain some experience fighting them.

 

[BaileyUK]

Hope you don't mind the Pun Boker.

but I could gain some fighting experience, calling the biggest thug around here an ars***le. And the least I'll learn how long a broken nose takes to heal.

ps A bad faith judgement can be referenced in any future dispute

 

[boker]

Hope you don't mind the Pun Boker.

but I could gain some fighting experience, calling the biggest thug around here an ars***le. And the least I'll learn how long a broken nose takes to heal

I know that you wont believe me, but I can tell you from my life experience that sometimes you learn more by loosing, than by winning.

 

[namelancer]

I know that you wont believe me, but I can tell you from my life experience that sometimes you learn more by loosing, than by winning.

As in losing a battle but winning the war, @boker ?

 

[lock]

If you registered 2 words dot restaurant then any Judge will side with the trademark complaint as it isn't merely coincidence you have set out to take their traffic..

 

[Sumeeth]

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.

I don't know that domain name is trademarked before (even i don't have knowledge that domains can be trademarked).

Thanks,

 

[Broheim]

The actual name is very relevant to the discussion and like BaileyUK pointed out, it's only speculations without it.
I'll go through a few examples that might be relevant.
If the name is something descriptive, like the example you used with UrbanHotels, it's highly unlikely you would be in any kind of trouble because it's a generic and very common way to describe hotels located in the city. You won't be allowed to trademark something that will block someone else from describing their product or service. "Quality Hotels" for example is a registered trademark in Sweden, but I doubt they would ever go to court if someone else described their hotels as "Quality Hotels", because they would most likely lose the TM. How they even got it is a mystery to me.

Another point to bring up if the name is descriptive to the service or product is that if it's tried in court, they might lose the TM because it's judged descriptive.
Jeep faced this problem a while ago because their brand name became synonymous with that type of car. Someone could describe their Toyota as a Jeep. Bad news for Jeep. So they set out to establish their brand as a brand, not a product. Same with Teflon, a brandname for a polymer owned by DuPont. I don't think they would want their case tried in court either.

But as mentioned before, it's impossible to even give solid advice without the actual name.

EDIT: The reason behind the registration also matters, of course.
Build a legitimate business around the name and you won't have a problem if it's not easily confused with the hotel's brand.

 

[Smiles76]

Just give up the domain. You're not going to win this one.

 

[elevator]

Just give up the domain. You're not going to win this one.

Your opinion matters to you but are you trying to advice him to be self difited, while he may have a good case to fight for the domain name and win.