Experts' opinion on Domain Dispute Please

[suthra]

hi GUyz, The company iam working, recently bought a domain <country>property.com (Country is my country). We spent thousands of dollars to buy this domain and we now run a portal under this domain relating to Property in our country.

We now face a legal dispute from the owners of <country>properties.com . They say that we have to shut down our site and also claims a damage for violating trademark laws.
They say that our site is similar to their site (Which is not), we mislead their visitors to our site and also their domain <country>properties.com is a trademarked domain (which is not as its a generic word)

Please provide us your opinions on these.,

Thanks and regards.,
Sarathy.s

 

[Miloj]

personally I think you won't get in trouble with that. That's just my opinion though. It just seems too dumb a claim to get anywhere in a court of law. That's like saying if I owned "usarealestate.com" and then you bought arizonarealestate.com that I could sue you because I had trademarked USARealEstate.com. It's just a scandalous claim. Ask them for proof of the TM. Where it's registered and when it was registered. You can check this yourself. Maybe when you ask for that they'll shut up and let you be.

 

[suthra]

Thanks Miloj ., I will look into it.,

 

[jberryhill]

Your situation is stronger than this one:

http://www.arb-forum.com/domains/decisions/471005.htm

Respondent’s website does indeed market properties located in the area that Respondent claims is known as DEER VALLEY (among other areas), and that activity certainly would qualify as a “bona fide offering of goods or services” under Paragraph 4(c)(i) of the Policy.

 

[DNQuest.com]

Not to challenge you, but in the reference you gave, the respondant in that case was in the business of renting, managing, and selling real property. Thus creating a bonafida reason for using the domain in question. It has been noted that having portals in not a strong arguement for having a bonafide reason for registering the domain.

Wouldn't this be viewed as a plural (or non plural in this case) usage of a domain without legitamate interest at the time of registration since the domain is confusingly similar to the established TM?

 

[Dave_Z]

The singular version being challenged by the owner of the plural version...this
is an interesting case, since it's literally a difference of a few letters (unlike,
say, the bocaresorts UDRP).

Some questions, though:

1. Does the complaining party indeed have a registered trademark?

2. If yes to no. 1, what are its details? (i.e. date, disclaimers if any, etc.)

3. When was the domain name registered?

4. Does the portal bear any similarity or relation to what their TM is for?

Tons of things to consider here. But it boils down to how much your company
is willing to risk defending rights to the domain name, especially if the other
party decides to go to Court.

Better yet, time to retain a seasoned attorney like Dr. Berryhill here or others.

 

[suthra]

Hi Dave thanks a lot for your help through PM and via this thread.,

Our Competitor does not have a trademark on the name, but they have the TM on the Logo.

 

[DNQuest.com]

Hi Dave thanks a lot for your help through PM and via this thread.,

Our Competitor does not have a trademark on the name, but they have the TM on the Logo.

When you say your competitor does not have a TM on the name, do you mean registered TM or common law TM? There is a difference. Additionally, if their logo contains their name, they may have a stronger claim than a common law TM.