Starting a similar site to physical store

[ComputerCarl]

Around year '00, let's say I owned a US calculator company called "Buttons Calculator" and purchased "buttons.com" . In 2015, a company in France builds a $5 million clothing store and names it Buttons and hosts it at buttons15.com.

The names have been changed to protect the innocent.

My question is now, can I transform buttons.com into a clothing store without fear of trademark infringement because; I owned the domain long before the other business opened; I, in fact, had a legitimate business operating under the domain first; the other entity is in another country (though only for a few years); "buttons" is a generic word?

I feel I can pretty much do whatever I feel with the domain because of its generic nature. For example, if I owned dating.com and someone comes along and starts datingasians.com, they certainly wouldn't expect that I wouldn't develop my site.

What is your opinion? I certainly don't want to lose my domain to a UDRP.

 

[johnn]

Ask yourself 2 questions:
1. Do you have more money than them for the lawsuit.
2. Do you intend to make money off from their brand.

If you said NO to 1 and YES to 2 then don't do it.

 

[Bob Hawkes]

I think the test is whether your use would be infringing on their TM. The fact you have held the domain, and used it for something, does not protect you if changing use to something that now takes advantage of their trademarked business. You are right that you could put buttons, a generic name, to many uses, but not to TM infringing ones. Just my nonexpert nonlegal opinion.
Bob

 

[ComputerCarl]

I value your opinions very much. Though they are going by the names "Buttons" (not real name), their real name is not in fact "Buttons", but something like "Buttons de la France Blahblah". I also cannot find record of registration of a trademark.

But you're saying if I created another dissimilar site, say an adult camera site, then that would be ok?

 

[ComputerCarl]

On another note, how does one survive as a domain broker with the possibility that anyone could trademark a name and then the owner of the domain cannot develop a site relating to the domain. For example, fashion dot com is now for sale; can I go to France, open a store called Fashion, and make the domain fairly worthless?

 

[Bob Hawkes]

As with most legal questions, there are many small things to consider and grey levels. Trademarks must be used, as I understand it. There can be many companies using a name like Apple and obtain trademarks as long as they do not infringe on each other. Buttons is very generic. The key question is whether a possible use is infringing and monetizing from a TM use. In many areas a TM does not need to be registered to apply, and rights can be established by long term use (although registration is always sensible). (not legal opinion)
Bob

 

[ComputerCarl]

Thank you very much, Bob. I suppose if I don't go ahead with development, the domain isn't worth much anyway - so I'm going for it anyway. I'll post results.

 

[Internet.Domains]

With legal matters, it is hard to give specific details to a vague question.

 

[Bob Hawkes]

Thank you very much, Bob. I suppose if I don't go ahead with development, the domain isn't worth much anyway - so I'm going for it anyway. I'll post results.

I'm confused your original note implied it was a domain you already held and used for a long period but now you are going for it.

 

[jberryhill]

On another note, how does one survive as a domain broker with the possibility that anyone could trademark a name and then the owner of the domain cannot develop a site relating to the domain.

How does one survive as a venture capitalist, knowing that an upstart with a new technology could render your investment worthless overnight?

These are the risks one takes.

But, on the original question... Merely having the domain name first does not provide a license to infringe junior trademarks. Your family might have been named "Ford" for generations, but it doesn't give you the right to start an automobile company by that name either.

My name has been "Berryhill" all my life. Can I start a restaurant chain called "Berryhill"? No, I can't, because someone has obtained a trademark for "Berryhill" for that purpose. LIkewise, the supermarket chain Aldi uses "Berryhill" as their in-house brand for things like peanut butter, chocolate syrup, jams, etc.. So, I can't do that either.

Can I use it as my name and in my law practice? Sure.

For example, fashion dot com is now for sale; can I go to France, open a store called Fashion, and make the domain fairly worthless?

What does the store sell? "Fashion" will never be a trademark for fashion.

Buttons is very generic.

If I start brewing beer, and sell that beer as "BUTTONS" brand beer, I can assure you that "buttons" is most certainly not generic.

Is "staples" generic? Is it generic for an office supply store?

Words are not "generic" absent context.

"Monster" is generic for monsters. It is not generic for energy drinks or electronic cables.

 

[Bob Hawkes]

Thank you very much for your helpful and insightful commentary @jberryhill. Since you quoted part of my statement about buttons being a generic term, but not the sentence I said as the next in the same paragraph, that I think is very much in line with your point, I did want to place my quote in its paragraph:

Buttons is very generic. The key question is whether a possible use is infringing and monetizing from a TM use.

I agree entirely with your point that one must not use it or any other term in a way that infringes upon existing TM use, and your example of Staples is an excellent comparable.

Thanks again for your contributions to the thread. I am sure I speak for most in saying we really appreciate your active presence on NPs.

Bob

 

[jberryhill]

Have some fake Nutella...

They opened an Aldi near me, and I always feel like I should be able to get that stuff for free.

But, no, I can't make sandwich spreads under my own name because they were doing it first, regardless of how long it's been my name.