Dynadot

trademark Domain trademark help needed?

Spaceship Spaceship
Watch

Sumeeth

DomExpertTop Member
Impact
3,707
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)
 
0
•••
The views expressed on this page by users and staff are their own, not those of NamePros.
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..
 
0
•••
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,
 
0
•••
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.
 
Last edited:
0
•••
Just give up the domain. You're not going to win this one.
 
0
•••
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.
 
0
•••
  • The sidebar remains visible by scrolling at a speed relative to the page’s height.
Back