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)

 

[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

 

[boker]

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 know the domain, the OP has sent me a PM, but I can't make it public, but is about two general words that make a brand for a hotel chain in UK with a few hotels. I have traveled all over Europe, including UK a few times and I have never heard of that brand, so if somebody from Eu doesn't know anything about them, how they can assume that somebody from Asia knew them and use their name in bad faith. Probably he noticed a website of theirs of something, but it will be hard to prove that somebody from another corner of the world wanted to abuse their TM rights in UK. Also, we are talking about two general words, the same two words could be used by anybody in the world, outside UK, to name a hotel. It's something like OliveTree or OliveGarden for restaurants, if there is a restaurant chain in US with that name, that can't stop somebody in other countries using it, EU countries are full of restaurants names OliveTree or OliveGarden.

 

[BaileyUK]

Sorry but 'Due Diligence' does come to mind - The registrant appears to have no problem with this after the registration - so there should be no problem in understanding and awareness pre-registration

I will add that I'm not always comfortable when somebody sizes up a business from their own perspective - It's too easy to play the emphasis game

Lets not forget this is a .restaurant registration not a limited market Country code. you do need to see the trade mark classes, descriptive and historical use in general and so many other elements to come down one way or the other. Guess that's why we need courts of judgement

 

[boker]

Sorry but 'Due Diligence' does come to mind - The registrant appears to have no problem with this after the registration - so there should be no problem in understanding pre-registration

I will add that I'm not always comfortable when somebody sizes up a business from their own perspective - It's too easy to play the emphasis game

I have to say that after seeing the name, probably the OP knew about them, because even if it's a general two words brand, it's not very commercial( there are a few other end users), so it will hard to sell it to someone else, but also I think that it will be hard to prove bad faith if it was not parked or something else. Also, because they have reacted to soon, a few days after registration, he could just say that his website was not ready and put up a simple wordpress website related to this terms so no bad faith can be in discussion and that's it. Also, I have just googled the terms and there a few other hotels in EU names the same: TM+keyword or TM+city, so how can the act like they are the only one's using it?

 

[BaileyUK]

That's probably why they have ADDED another word (City/word etc) to the TM wording registration. So as you say they have intentionally distinguished themselves from the TM holder.

again I am working to general principles here

 

[boker]

That's probably why they have ADDED another word (City/word etc) to the TM wording registration. So as you say they have intentionally distinguished themselves from the TM holder.

again I am working to general principles here

I think that some of them used that name before them. For example, OliveTrees in Uk, do you think that has any TM rights over OliveTreesBerlin or over OliveTree in North Carolina? I think that their rights end in the moment they go outside UK and they can't stop anybody using the name.

 

[BaileyUK]

Lets not confuse 'General' words in descriptive usage to the use of distinguishing Trademarks, which is where your argument appears to be going.

You cant Trademark a word/wording in it's common usage classes - It has to be non-associated to get passed the TM classification system

 

[BaileyUK]

By the way that's good of you Boker to acknowledge the domain registrants 'Probable' intent and purpose. I personally believe the TM holder has seen the same, hence the contact. And lets note for a Company to be that much on the ball makes me think they subscribe to a TM protection service - So definitely not worth chancing your arm with, particularly when things are beginning to look pretty clear-cut from the registrants intent.

I wouldn't even dare ask for $100 (If I'd made the same basic error) They may choose to make an example of the registrant to dissuade any other chancers - If they have had a few of them

 

[boker]

By the way that's good of you Boker to acknowledge the domain registrants 'Probable' intent and purpose. I personally believe the TM holder has seen the same, hence the contact. And lets note for a Company to be that much on the ball makes me think they subscribe to a TM protection service - So definitely not worth chancing your arm with

Even so, if the OP doesn't want to keep it, I will be more than happy to receive it as a gift and they can come after me afterwords. In the worst case scenario I will not loose anything and I will make them pay big afterwords, using the cctlds...

 

[karmaco]

All this is moot if as I said the registrant had ads on the landing page that has anything to do with the trademark holder. It’s all about intent and perceived intent here and sorry some people here don’t respect trademarks.

No one is bringing up that the party contacted him so he says mere days after registration. He’s not going away. When I said drop the name it’s because some things are more trouble than they are worth and every domainer should know that including Mann. Just because you can do it doesn't mean you should.

 

[BaileyUK]

All this is moot if as I said the registrant had ads on the landing page that has anything to do with the trademark holder. It’s all about intent and perceived intent here and sorry some people here don’t respect trademarks.

No one is bringing up that the party contacted him so he says mere days after registration. He’s not going away. When I said drop the name it’s because some things are more trouble than they are worth and every domainer should know that including Mann. Just because you can do it doesn't mean you should.

I think my reference to a TM Protection service was intended to show how on-the-ball the TM holder was. I think it unlikely the TM holder themselves carry-out daily or regular checks. But, I do agree trademark understanding is very poor across the board. It's one of those things that is mostly common sense, once you understand the basics of what can and cant be registered as a TM and the classification system. But probably not for some on the poorer continents

 

[Dominique]

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.

Whether its hard to prove or not, it depends on various occasions.

In this case, http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-0583 the complainant from USA successfully proved disputed domain name was registered and used in bad faith, despite the fact respondent was from China and he (complainant) didnt have registered trademark in China.

The Panel concluded:
"One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this regard, the Panel finds that the Complainant and its DANSKO mark enjoy a considerable reputation in the retail sector particularly with regard to shoes and clogs in the United States. The Complainant has also established that it has considerable exposure and presence in the Internet through its official website at the following domain names: <danskooutlet.com>, <dansko.com> and <danskoshoes.com>. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks can transcend national borders. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name."

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

Are you registering a trademark or a domain name? Its not the same.

 

[boker]

Whether its hard to prove or not, it depends on various occasions.

In this case, http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-0583 the complainant from USA successfully proved disputed domain name was registered and used in bad faith, despite the fact respondent was from China and he (complainant) didnt have registered trademark in China.
Panels concluded:
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this regard, the Panel finds that the Complainant and its DANSKO mark enjoy a considerable reputation in the retail sector particularly with regard to shoes and clogs in the United States. The Complainant has also established that it has considerable exposure and presence in the Internet through its official website at the following domain names: <danskooutlet.com>, <dansko.com> and <danskoshoes.com>. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks can transcend national borders. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Are you registering a trademark or a domain name? Its not the same.

There are lot's of differences: dansko is not a dictionary word so it's easier to trademark and differentiate itself; they are selling all over the world, including China, so doesn't matter if the TM is just for US if their products are recognized all over the world and also they have a big exposure over the internet, so it counts. In the other case, a small hotel chain, with presence just in UK and nobody outside UK will know them. Also, it's almost impossible to prove that opening a hotel with the exact two words in China, somebody could benefit by using that name because they are known in UK. Even in France or Spain will not be any issue, because nobody will know their brand. Also, regarding Dansko, if they really wanted to use that name, they could use dansko.hk or dansko.cn or other cctlds and let them try to co to civil courts of each country to try to force them, it could have taken years and there is no guarantee that they would have convinced all the judges that they have the right over that name.

 

[Dominique]

Also, it's almost impossible to prove that opening a hotel with the exact two words in China, somebody could benefit by using that name because they are known in UK. Even in France or Spain will not be any issue, because nobody will know their brand.

I need to ask again, is Mr. @Sumeeth opening a hotel or has he registered a domain?

Are you saying he has right or legitimate interest in that domain name?

 

[boker]

I need to ask again, is Mr. @Sumeeth opening a hotel or registered a domain?

Are you saying he has right or legitimate interest in that domain name?

He registered a domain, the thing regarding the hotel was an example 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, a few days after he registered the name( was a landing page at godaddy without ads), they just asked the domain, he could have been one of the owners of a hotel using the same name from around the world, they didn't cared. If I would have been in his place I will change to privacy and forward to one of the other hotels using that name or even handed over to one of the other owners and let them prove that they have the right over it.

 

[BaileyUK]

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