question Question reg Trademark infringement

[Leo2k]

My domain name is Y.tld , for example

There is a company whose name / trademark name is, X Y

If i all contacting them regarding selling my domain Y.tld, can they file infringement by any chance since it's partially matching their trademark name?

 

[Peter45]

If i all contacting them regarding selling my domain Y.tld, can they file infringement by any chance since it's partially matching their trademark name?

Yes

Their chance of winning depends - among others - on how much XY is confusingly similar to Y.
The fact that you contact them means that it is similar - or at least you think it is - otherwise you wouldn't contact them.

The fact that you contact them is a strong sign that you registered the domain targeting them, and are using it in order to target them.

Imo only J. Berryhill could save you

 

[Leo2k]

Yes

Their chance of winning depends - among others - on how much XY is confusingly similar to Y

There is no confusion. Their Y and my domain name exactly matches with same meaning. But Y is a very common word and not a made up word.

 

[Peter45]

There is no confusion. Their Y and my domain name exactly matches with same meaning. But Y is a very common word and not a made up word.

i) you contact them = the domain is similar to their TM, otherwise you wouldn't contact them.

ii) you don't have a legitimate usage of the domain.

iii) you contact them = evidence that you registered and are using the domain in order to target the TM.

imo

 

[draco]

When did you register the domain in relation to when the company was formed and when they applied for their trademark? For example, I think it would be hard to argue you registered it in bad faith if you registered it 10 years before the company existed.

Even if you did, it doesn't mean that still can't try to get it.. and they could win.

Just my non-lawyer thoughts...

 

[Peter45]

iii) you contact them = evidence that you registered and are using the domain in order to target the TM.

Just in order to back this remark up with WIPO

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark

Thanks to @etiqdom who pointed me to this passage

 

[etiqdom]

Yes. Peter has answered that in details. Also, please see Nike vs. Nike-soccer case (sorry, I can't provide links as a new member).

Kindest wishes,
Marina

 

[Leo2k]

Just in order to back this remark up with WIPO




Thanks to @etiqdom who pointed me to this passage

Thank you all for the opinion . I have decided not to contact the respective company.

 

[etiqdom]

You are most welcome, Sir. However, the best option is to never invest in such "assets". I'd like to address the attempts to invent good faith for such names by the quote from the above-mentioned case, Nike vs. Nike-soccer:

"No Rights or Legitimate Interests

While the Respondent has not filed a response, it is clear from correspondence sent by the Respondent that his explanation for choosing nike-soccer was that he had his own prior plans for the extensive use of the domain name for information on ancient mythology, but that this plan had fallen through. While Nike may have been the name of an ancient Greek god, today, in relation to sport and sports clothing and equipment, the unavoidable connection is with the Complainant company, rather than the Greek god."

Best,
Marina

 

[Paperhand]

Show attachment 239535


i) you contact them = the domain is similar to their TM, otherwise you wouldn't contact them.

ii) you don't have a legitimate usage of the domain.

iii) you contact them = evidence that you registered and are using the domain in order to target the TM.

imo

I got a small follow-up question on this: regarding tm laws, the use of an already registered name is still legal in case it is in a distinctively different area of service.
--> so if I register a domain that is partially or even completely similar to a registered trademark, and I put it up for sale without outbound sales, what am I doing wrong in legal terms? I am just preparing the grounds for another entity to come and build a business in a different niche with the same (or similar) name.

Sorry for this very noob question, hope you don't mind coming into your thread, @Leo2k

 

[Leo2k]

Sorry for this very noob question, hope you don't mind coming into your thread, @Leo2k

No problem. I too would get some more idea.

 

[Peter45]

I am just preparing the grounds for another entity to come and build a business in a different niche with the same (or similar) name.

... or in a different country!

If you want to get technical you can replace different area of service and different niche with different Nice classification category


That said, much depends on a) how much the TMed phrasing is distinctive of a product or of a company and how much known that product or company are, and b) whether the phrasing in question has a dictionary meaning or not.
imo