Is xvideo (without s) + keyword too hot for a domain?

[Paul Walter]

Hi,

I got a couple domains that IMO sound a bit too similar to the famous xvideos webservice. Xvideos is actually a trademark while xvideo is not.

The domains I have:
xvideoreviews.com
xvideostudio.com
xvideotech.com

Do you guys think these are safe domains or could I get in trouble for that? When I bought them I was naive and unaware of the actual xvideos trademark and the legal consequences of the so called trademark domain squatting.

 

[East Street]

IMHO / NAL

Sounds like you have some domains which are arguably unique enough to be used without infringement. The use of second word qualifiers in your case is probably enough to make them distinguishable from their mark and therefore not infringing. A large factor in the equation is your intent when you reg'd the names.

Reviewing xvideos is almost certainly a valid activity.
Being or providing a studio for xvideos is likewise a genuine activity.
Same for tech.......

This does not mean they can't send you a cease and desist letter, or file a UDRP and otherwise discourage your use of the names. I would expect that if you did not reg. the domains with bad intent, you certainly have a defensible position in using the names.

If you did receive a C&D order or other communication and you want to keep these domains I would suggest that you ask them how you could affiliate with them or otherwise use use your domain names to complement what they offer. I would take any communication from them as an opportunity to build something of mutual benefit rather than go a legal route that won't be much fun. Use the names as an opportunity.

If they were my domain names I would not be particularly concerned in this case.

Again NAL, but I have some TM experience.

 

[Paul Walter]

Thank you for the comprehensive answer. Very much appreciated.

 

[enlytend]

Word Mark XVIDEOS
Goods and Services IC 041. US 100 101 107. G & S: Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented subject matter. FIRST USE: 20060820. FIRST USE IN COMMERCE: 20070401
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK

If you're using those domains or have them parked with ads for any of the goods and services listed above, they could have grounds for claiming that you're infringing on their trademark. Google the term "confusingly similar." Are the additional words and singular vs plural a valid argument that you're not? Maybe, IANAL, but do you have and can you afford the legal resources to match theirs if they challenge it?

If they were to contact you, I would be very careful how I answered.

They apparently have no qualms about filing a UDRP If they file a UDRP and you lose, that can be used against you in future domain disputes.

This may be of interest - they lost in this case. The respondant wasn't defending the UDRP themselves, they were paying a lawyer, so something to consider: http://domainnamewire.com/2014/06/20/michael-berkens-wins-udrp/

If the domains are important to you, ask a real lawyer.