NewRegister.com vs Register.com - Trademark infringement ?

[nRnF]

NewRegister.com - Register.com = Trademark infringement ?

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Here is a part of the letter:
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EDITED - CASE CLOSED
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I would be thankful for any thoughts/tips how to act in this issue.

 

[RJ]

Depends on how you value the name. If you don't care about it and don't want to both going through a dispute, just hand it over. If you'd like to try to keep it, tell them you have no intentions of violating their trandemark and intend to keep the name. They'll likely file a UDRP case against you, in which you'll have 30 days from their complaint to file a response.

Here's a couple of quotes from a recent UDRP desicion. This may apply here in a similar way, since I would consider 'Register' to be a common word.

The Policy was not intended to permit a party who elects to register as a trademark or service mark a common word to bar all others from using the common word in combination with other common words, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the mark holder. A simple search for the term "match" on the USPTO website turns up 1,889 registered marks which include the common word match, usually in combination with one or more other common words, most of which registrations predate that of Complainant.

By registering the service mark MATCH.COM, Complainant cannot thereby preclude anyone else from ever registering the common term "match" in combination with other common words in the .com gTLD. So long as those domain names are used in their generic sense, rather than seeking to profit from the good will associated with Respondent's trademark, their registration and use would not violate the Policy. Therefore, the Panel finds that if Respondent has not used the domain names in bad faith, then Respondent has rights and legitimate interests in respect of the domain names at issue.

From: http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0230.html

 

[jeter4982]

my suggestion - offer to sell it to them for a lot of $$$$$$$

 

[Dave_Z]

my suggestion - offer to sell it to them for a lot of $$$$$$$

Do that, and you'll give Register.com more books to throw at you.

I just checked it out and it redirects to targetdomain.com. By doing that, your
goose is virtually cooked.

Better hand it over and spare yourself the trouble. There's no way you'll win.

Even if you changed the contents, I'm sure Register's people copied it in their
sides and will use that as evidence.

 

[jeter4982]

ya, but i bet you could get 1000 dollars to avoid going to court

 

[jehnidiah]

I don't think they have a case against you. "New Register" is just like a new registration of an Internet domain. No infringement. I'd fight them.

 

[Riceman]

I would not get too concerned. Register is a common term, even if there were granted the trademark they have little leg to stand on. Looking at this it seems to have taken 5 years to get approved.

 

[Sergio965]

Just hand it over, although to you do have a good chancing of winning in court. Don't try to sell it to them, that'll just give them more points to brush on.

So, it's up to you and how much you take pride on the name. If you love it, fight it and just state that the word "Register" is also used in other domains and yet they still have them. Also, you can say that the word "Register" is a common word. :imho:

Just my 2 cents

 

[Dave_Z]

In a UDRP, the Complainant must prove each of the following:

- that the Respondent's domain name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the
domain name; and

- the domain name has been registered and is being used in bad faith.

It depends if Register.com's attorneys are able to convince the panelist/s of
their case. No. 2 and 3 I'm sure they can prove almost easily, but for no. 1,
I don't know if they have a mark for their brand name.

Ultimately the answer is up to you. But here's something I add: if you have
the time, money, and sincere belief the name is yours to do as you see fit,
then be prepared to defend it with all your might.

Otherwise, give it up and move on.

 

[jehnidiah]

I completely disagree with giving up. I hate when big companies try to push over little ones who might take even the slightest bit of their revenues.

If you decide to go on with this and defend what is rightfully yours, let me know, and I will provide a share of financial backing to help you out. I really hate when companies do that crap.

 

[Dave_Z]

Just checked at least from USPTO and saw that Register has a couple of LIVE
trademarks. They'll have little to no problem proving UDRP's point no. 1.

And since newregister redirects to targetdomain, which practically does the
same kind of business as Register.com, Register has a strong chance of being
able to prove UDRP's points 2 and 3.

All in all, again as a personal opinion, there's no way you'll win, be it UDRP or
even a Court case.

You sure it's still worth hanging on to?


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Just edited: I can be wrong, of course. Anything can happen.

Is it worth the risk?

 

[Nexus]

All in all, again as a personal opinion, there's no way you'll win, be it UDRP or even a Court case. You sure it's still worth hanging on to?

I could not agree *more*. I own RegisterNexus.com, but I think there's definitely something to keeping the "Register" from the ".com" in this case.

~ Nexus

 

[1rrr1]

i would just give it to them.

 

[Caveman]

 

[Caveman]

So why haven't they gone after bulkregister.com? Same basic name structure. I'm sure there are other names that fall into this catagory as well.

 

[RJ]

So why haven't they gone after bulkregister.com? Same basic name structure. I'm sure there are other names that fall into this catagory as well.

Good example. You would have a chance of retaining your name on the basis that 'register' is a common word. Really Register.com is running the risk of getting their trademark invalidated by pursuing cases like this.

Common words are not supposed to be trademarkable, neither are domain names.

 

[Nexus]

So why haven't they gone after bulkregister.com? Same basic name structure. I'm sure there are other names that fall into this catagory as well.

Icann accreditted and not a "little" guy. To be honest, I think the prefixes like "new", "my", and "the" are a LOT more susceptible to trademark infringement claims than more descriptive/substantive terms like "bulk", "name", "domain", or "url". A "new" Register.com could easily refer to the existing company. Just my opinion though. I've no background in the "legality", but my impression would be that they would certainly be more concerned about mark dilution with these more generic additions.

~ Nexus

 

[armstrong]

all taken!

myregister.COM
theregister.COM
aregister.COM

 

[Dave_Z]

Good example. You would have a chance of retaining your name on the basis that 'register' is a common word. Really Register.com is running the risk of getting their trademark invalidated by pursuing cases like this.

Common words are not supposed to be trademarkable, neither are domain names.

Domain names definitely can't be trademarked. But the words it uses can: it
just so happens trademarks can apply to them as well.

Good question, though, about Bulkregister. Pure speculation, but probably
because of a "gentlemens' agreement" among competitors.

nRnF, if you're still pushing thru with fighting for the domain name, then I wish
you good luck and those who'll support you in this endeavour.

 

[Nexus]

all taken!

Yeah, its a bunch of mush in the end. Most of these "Register.com" alikes aren't actually forwarding immediately to a domain registration site. MyRegister.com does however (owned, in fact, by another registrar). Interesting that none of these are simply CALLED the name that they are forwarding from. I take it Register.com would try to stamp out a reseller using a similar name, but not a full blown registrar unless they had even more to back them up. I think that's what's at play. They certainly have a case considering how you're using it.

~ Nexus

 

[nRnF]

Thx you all for your comments.
I will post the end of the history once it is over

 

[spikedo]

Fight the good fight!

 

[000000000]

If some one challenged their trademark on the word "Register" they would lose their trademark. Both Register and NewRegister are excellent domain names for a domain name business. There is nothing wrong with competing in the same business with the use of a such a generic word that is easily associated with domain name industry in general.

"If I where you... I would" sign up for a reseller account with enom or directi asap. If they continue to harrass you, or if they file with UDRP against you, just file complaints and suite against them for unfair business practices and a slew of other things.

In the end your name could be worth more to you than it ever will be to them. But that is just one mans opinion.

 

[Nexus]

In the end your name could be worth more to you than it ever will be to them. But that is just one mans opinion.

Straight facts, it's not worth anything to them. NOT actively defending a trademark... that's their supposed gripe. If someone searching for Register.com is likely to ALSO bring up "NewRegister.com", they have a reason to be concerned. Their trademark is NOT on "Register", its on "Register.com". When I went to file for my trademark, the trademark attorney at the USPTO actually recommended I get a separate trademark on the .com.

Search Google for "register.com.", and look at the 3rd item down. I think possibilities like (unintentionally promoting someone else using your brand) that are what bugs them and found the basis of their complaint. Remember that company that went after all the people owning domain names starting with "Easy"? I think it certainly depends on a lot of factors whether you "fight it", not least of it being worth your time.

~ Nexus

 

[Dave_Z]

I just remembered something, although I can't be sure: you can actually file a
trademark for a common word, but you have to indicate what it's going to be
for aside from its "normal usage".

For example, if you register a trademark for apple and your line of business is
selling surf boards, you have to indicate that in your trademark application.
But you can't file a trademark for apple if it's for the fruit itself.

Time to ask around...