If you hyphenate a TM...Can you get in trouble??

[saucey]

Example... Suppose AB.com is trademarked.... Could you register A-B.com without getting in trouble?? Both A and B are generic... So I would think that as long as you weren't trying to sell the same thing as the tademarked site.. Things should be good...right?

Appreciate your thoughts!

 

[Damion]

Too many if's that are relevant to your question.

For example, AppleComputers.com
Basically two generic words combined, but right away the domain can be perceived as a property from Apple the world famous brand in connection with "Computers".

I wouldn't use or register this domain, and a lot of people that want to stay on the safe side wouldn't.

So if your situation resembles the above example, i would advise to pass up on it and look for an alternative domain.

ShellProducts.com - You could build a site offering products made of sea shells, but when you start to promote products similar to the products Shell the company brings on the market...you're shooting yourself in the foot.

So think carefully about the keywords you're going to use...and how you're going to use the site.

2 cents.

 

[saucey]

Thanx for the great advice.... I was thinking of something along the lines of the example applecomputer... but not quite as cut and dry...

I will have to think about this one, and as you say... choose keywords carefully!

 

[IAmAllanShore]

Then the hyphen wouldn't matter if your use was not infringing... Like "IBM.sc" being "Ideal Beach Moments" (Who was that again?).

However, a hyphen does not bar the finding of a domain name being identical or confusingly similar to a registered mark for the purposes of a UDRP.

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1605.html

"It is an established principle that the use or absence of punctuation marks, such as hyphens, does not influence the consideration of similarity or alter the fact that a name is identical to a mark (See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038). "

-Allan :gl:

 

[saucey]

Thanx Allan! Great info... but just to be 100% clear...

Having a hyphenated name and selling/providing a completely different service is perhaps more allowable, but if the non-hyphenated TM owner wanted to raise a stink about it.... He/she could??

 

[Dave_Z]

but if the non-hyphenated TM owner wanted to raise a stink about it.... He/she could??

There's examples of that, some of which didn't produce the desired results. It
can really go either way, depending on a variety of things.

It's one thing to sue or file a dispute, it's another to win.

 

[IAmAllanShore]

They can always raise a "stink" about it, but their probability of success and/or your chances of facing that situation are directly related to what the name is and how you use the name.
If you hyphen Pep-si.com and make a website about a Spanish soft-drink named "Pep" to which you are answering in the affirmative, that could be a problem.
-Allan :gl: