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How close can two website names be without causing problems

Labeled as question in Legal Discussion, started by MrOriginal, Sep 24, 2020

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  1. MrOriginal

    MrOriginal Established Member

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    In Canada, there is a website called "CanadaComputers.com".

    So lets say you also had a computer store and wanted to call it "CanadianComputers.com".

    Would you likely run into problems with trademark, sued, cease and desist, etc?

    I don't think its such an easy question, because while customers could be confused between the two very similar names, they've taken the name of the entire country ("Canada") as part of their business name -- which is a little different than calling your soda shop koka-cola and being sued by coca-cola.

    I'm in a similar predicament, where a website selling the same items in the same industry has the exact same website/business name as mine, with the only difference being theirs has "Canada" in it while mine has "Canadian".

    So, for example, if there website was CanadaShoes.ca mine is CanadianShoes.ca

    Is this going to be a problem?
     
    Last edited: Sep 24, 2020
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  2. passini

    passini Established Member ★★★★★★★★★★

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    Check the trademark databases to see if the other brand is registered (if you use the domain for the same business category). If used in another sector there are no problems. For example I can reg apple.whatever and sell apples but of course I can't use it for phones...
     
    Last edited: Sep 24, 2020
  3. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    There aren't enough facts to make that kind of determination.

    One of the most well-known commercial establishments in Canada is Canadian Tire:

    https://en.wikipedia.org/wiki/Canadian_Tire

    They've been called that since 1927, employ 58,000 people, and had $14B in revenue in 2019.

    Are they Canadian? Yeah.

    Do they sell tires? Yeah.

    But, once again, like the Indianapolis Motor Speedway or American Airlines, Canadian Tire certainly has acquired distinctiveness as a mark, and not merely as a descriptive term designating a place in Canada where you can buy tires.

    canadiantireblackfriday.org
    Transfer
    WIPO D2012-2530 (Decision Date: Feb. 20, 2013)


    canadiantireblackfriday.com
    Transfer
    WIPO D2012-2529 (Decision Date: Feb. 20, 2013)


    canadiantirefranchise.com
    Transfer
    WIPO D2012-1576 (Decision Date: Oct. 1, 2012)


    canadiantiremastercard.org
    Transfer
    WIPO D2012-1026 (Decision Date: July 9, 2012)


    canadiantiremastercard.net
    Transfer
    WIPO D2011-0648 (Decision Date: June 7, 2011)


    canadianusedtire.com
    Transfer
    WIPO D2009-1497 (Decision Date: Dec. 20, 2009)


    www-canadiantire.com
    Transfer
    WIPO D2009-1226 (Decision Date: Dec. 1, 2009)


    canadianttire.com
    Transfer
    WIPO D2009-0828 (Decision Date: Aug. 12, 2009)


    canadatire.net
    Transfer
    WIPO D2008-1788 (Decision Date: Jan. 8, 2009)


    canadiantirebanking.com
    Transfer
    WIPO D2008-1195 (Decision Date: Oct. 8, 2008)



    thecanadiantire.com, canadien-tire.com, canadianetire.com
    Transfer
    WIPO D2007-1407 (Decision Date: Nov. 21, 2007)


    canadiantire.tv
    Transfer
    WIPO DTV2007-0015 (Decision Date: Feb. 5, 2008)


    canadiantirediscounters.com, canadiantirecatalogues.com, canadiantirebargain.com
    Transfer
    WIPO D2006-1159 (Decision Date: Dec. 12, 2006)


    canadiantireoptionsmastercard.com
    Transfer
    WIPO D2006-1117 (Decision Date: Nov. 8, 2006)


    canadatire.net
    Transfer
    WIPO D2006-1049 (Decision Date: Oct. 3, 2006)


    canadian-tires.com
    Transfer
    WIPO D2006-0671 (Decision Date: Aug. 31, 2006)


    cantire.info, cantire.biz
    Transfer
    WIPO D2005-0375 (Decision Date: June 4, 2005)


    wwwcanadiantire.com
    Transfer
    WIPO D2003-0232 (Decision Date: May 22, 2003


    canadiantiredealers.com, canadiantiredealer.com
    Transfer
    WIPO D2002-1069 (Decision Date: Jan. 14, 2003)


    canadian-tire.com
    Transfer
    WIPO D2002-0461 (Decision Date: Aug. 6, 2002)



    ecanadiantire.com, e-canadiantire.com
    Transfer
    WIPO D2000-0985 (Decision Date: Oct. 27, 2000)
     
    Last edited: Sep 25, 2020
  4. MrOriginal

    MrOriginal Established Member

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    Well, it is a good thing it's not Canadian Tire. Rather, what appears to be a relatively small business without a trademark.
     
  5. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Well, there's no way to know that from the OP. Can a term like "Canada (whatever)" be a distinctive mark? Sure, it can. It's going to depend on the specific facts.

    Where by "without a trademark" one might assume that you mean "without a REGISTERED trademark". Either that or you have already made a determination that they aren't entitled to common law rights in whatever the term might be.

    In Canada, or the US for that matter, registration is not necessary to whether or not someone does or does not "have a trademark".
     

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