NameSilo

Misspelling is Trademarked. I own proper spelling.

Labeled as question in Legal Discussion, started by Bernard Wright, Feb 22, 2020

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  1. Bernard Wright

    Bernard Wright Established Member

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    I own a relatively old two-word dot com. There exists a company with a US Trademark on a misspelling of the name, filed five years after I acquired my domain. If someone were to say, “go to BlahBlah.com”, you’d go to my URL. The TM on the misspelling specifies two things,1) the type of products it pertains to, and 2) that it is intended for an internet website that conducts internet commerce, more or less.

    I thought this was a unique scenario, since my correct spelling is the “typo” as far as the TM is concerned. What do you think would happen if I were to put ads on a page it was parked at? ...ads that were dissimilar to the industry the TM pertains to of course. Does anyone have experience with such a scenario?

    Yes, I could ask an attorney but I thought this would be an interesting topic to discus. I’ll cross that legal bridge when I get there. Not in a rush.
     
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  2. Hypersot

    Hypersot Top Contributor VIP

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    The misspelling is the brand.. yours is just a normal two-word dictionary phrase right?

    I'm very very careful with trademarks (registered or not) as I'm a firm believer that, if something doesn't feel right then it probably isn't.

    In your case, even I don't see a problem unless your two word clearly refers to the brand.
     
  3. pb

    pb Established Member ★★★★★★★★★★

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    Are you sure it's a misspelling and not just another language (like MediaMarkt for example)?
     
  4. Rhinnnn

    Rhinnnn Established Member

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    I'm fairly certain that you'd have absolutely no problems doing that.

    If they've got a trademark a whole five years after you bought the domain and you want to serve ads that aren't related to the company's activities, that company would have no legal case against you whatsoever.

    Still, it's always better to talk to an actual lawyer.
     
  5. Bernard Wright

    Bernard Wright Established Member

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    For example, let’s say I own WhyNot and the TM is yNot.
     
  6. ultradog

    ultradog Established Member

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    You'd have to make certain your parking doesn't advertise them. I'm sure most holders of large portfolios had to remove domains from parking because of that.
     
  7. pb

    pb Established Member ★★★★★★★★★★

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    Them or a competitor. I've owned and parked a name variant of a big auction platform and they never as much as contacted me, but sent a C&D letter immediately after I redirected the domain to aliexpress. ;)
     
  8. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    they might sue you in case of an infringing content
    if you choose a certain content for an advertisement that is not covered by their TM
    they may enhance their TM to cover that
    w/o you noticing



    for you it's best to not have content
    and wait

    in case you want to use that domain
    register your own trademark
    to protect yourself
    ( $600 USD )

    I'm no lawyer
    don't follw my advice
     
    Last edited: Feb 23, 2020
  9. tonyk2000

    tonyk2000 Top Contributor VIP ★★★★★★★★★★

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    I have similar situation:

    - Correct spelling is mine .com

    - Incorrect spelling is a trademark (registered after my domain), and they actually use it in commerce (company name)

    I learned this after noticing an increased traffic to parking page. Sometimes they start promoting their products more actively - and the traffic to my parked page also increases. So far: no issues. I tried to configure parking with terms related to domain name itself (not to the tm) and some generic terms. Due to Google unpredictable behavior, it is possible that they still show tm-related ads sometimes (different geos, even the content of ads after the 1st click) - but, what can I do? I did my best not to capitalize on their TM. Why would anybody start a business on misspelled term is beyond my understanding. But, it happens. They are now living with the consequences of their choice. The domain is not actively listed for sale - this may also be the reason why it peacefully coexists with later misspelled TM, about 5 years already...
     
    Last edited: Feb 23, 2020
  10. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    they could target your domain within G adwords
    and you are done

    the danger is not in selling it
    but in showing ads

    I'm no lawyer don't listen to me
     
  11. tonyk2000

    tonyk2000 Top Contributor VIP ★★★★★★★★★★

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    Theoretically speaking - yes. Practically - G in their wisdom already shows tm related terms on default parking lander, but I replaced those with good custom keywords.

    In any case, they do not need it (at least, not for rebranding). The domain itself is a specific term related to human anatomy / health, and their misspelled tm is for technology products. They may well like to have it to forward the visitors who are using correct spelling, but, again, I heard nothing so far. Moreover, it is not obvious that they are aware that their mark is in fact misspelling of a specific not-too-frequent term...
     
  12. Hypersot

    Hypersot Top Contributor VIP

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    I don't understand,

    if I own the domain nicedomain.com and someone registers a business with the name nicdomains.com.. how can I get in trouble? both refer to the domain business but one contains dictionary words and the other is.. whatever nic might mean.
    Even if 'nicdomains' ads appear on the lander page surely no-one can claim that as bad faith.

    One more thing that is also important is,
    all parking pages show a notice that parking service & domain owner are not the ones that control the ads.

    This I think has to be judged on a per domain basis and there is no standard rule that can be applied to all.
     
  13. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    it has nothing to do with you understanding or agreeing

    it's simply following the law:
    if you show ads that are related to a trademarked class
    on your domain
    that is confusingly similar to a trademarked term within that class

    you are exposing yourself to trouble



    I'm no lawyer don't listen to me
     
  14. tonyk2000

    tonyk2000 Top Contributor VIP ★★★★★★★★★★

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    Indeed. The only thing that may save the domain in UDRP would be the following - the (.com) domain should have been both registered in bad faith and used in bad faith to let the Complainant prevail. In nicedomain/nicdomains example, domain registrant may be able to show that he registered nicedomain .com in good faith. And save the nicedomain as the result (even though he is using the domain in bad faith -by showing tm-related ads). It is UDRP. Local laws (american anticybersquatting protection act, etc.) may be of different opinion.
     
  15. Hypersot

    Hypersot Top Contributor VIP

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    Guys, while I know that Law can many times seem unfair, it's not always stupid.
    Don't forget that anyone can sue anyone.. it's the outcome that matters and in my example above I think the dictionary-domain owner would prevail in the end.

    Needless to say that I'm not a lawyer or anything close. Those are only my opinions.
     
  16. frank-germany

    frank-germany domainer since 2001 / musician VIP

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    do you want to spend $100K USD on winning that case?
     
  17. Hypersot

    Hypersot Top Contributor VIP

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    What do I have to gain? a non-existent domain? :)
     

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