Trademark Issue?

[gou]

Ok, so I found an unregistered domain with an OVT of over 1 million.
It happens to be a name of a band but I couldn't find any trademark information it.
It's one of those "the xxxxxxxxx" bands and the term that comes after "the" is generic.
I probably won't register it, but I would like to hear your thoughts on it.

 

[DNQuest.com]

Step one, if hearing the word makes you thing of a particular product/service/comapany/celeb, the odss are if you registered the domain, you are infringing on a TM. That is the easy part.

On to the hard part, it is what you do with the domain that matters most. If you use it in bad faith, then chances are you will lose it if challenged.

(before you ask, just lookup "trademark" and "tm" in the search box and read the gazillion threads to determine what is bad faith)

 

[IAmAllanShore]

Clarification:

Hearing "The Bravery" makes me think of a band, but in no way would registering "Bravery.com" be an issue unless you made it an issue with your content or actions.

Hearing "The Jimi Hendrix Experience" makes me think of a band, and your registering "JimiHendrixExperience.com" would be an issue without respect to content or actions, most likely.

If the term is generic, you can think of any number of popular items/groups/products/individuals/etc., as is true with website development, content is king That being said, the risk is probably not outweighed by the reward, typically, if the name is still available this late in the ballgame.

-Allan

 

[labrocca]

I tell you what..PM me the domain name...I will register it...if I make a small fortune with it I promise to share it with you.

 

[Erdy]

Famous people who are known with their name, nickname or stage name don't need a trademark for what name they are known with.This includes musicians, authors, actors etc.

If you registered "TheDoors.com" I think you would lose the name no matter the content. With "the" in front I think you have little chance.

If you had registered "Doors.com" then you could keep it provided that content isn't related to music.

 

[IAmAllanShore]

Famous people who are known with their name, nickname or stage name don't need a trademark for what name they are known with.This includes musicians, authors, actors etc.

If you registered "TheDoors.com" I think you would lose the name no matter the content. With "the" in front I think you have little chance.

If you had registered "Doors.com" then you could keep it provided that content isn't related to music.

The problem with "thinking" is that it isn't always the right answer (As moronic as that might sound ).

How many of you would chalk up "BruceSpringsteen.com" as an "easy one" - right? Especially if the content on the site was only about the musician, and the owner's name is not the same...

Well, check the whois, and then check some interesting reads about how the owner kept it.

Yet again, it's not the rule, nor is it the exception to the rule - it's just one way things work out, and one reason why advice must be given with a "light touch" in these matters.

-Allan :gl:

 

[DNQuest.com]

Famous people who are known with their name, nickname or stage name don't need a trademark for what name they are known with.This includes musicians, authors, actors etc.

If you registered "TheDoors.com" I think you would lose the name no matter the content. With "the" in front I think you have little chance.

If you had registered "Doors.com" then you could keep it provided that content isn't related to music.

Actually, famous people (celebs) use thier name in commerce and attain TM status. So their name IS their TM. What I think you are trying to say is that they do not need to obtain registered mark. As far as owning celeb names, it depends on the usage. Celebs have won and lsot battles for their names. It all depends on how the domain is used and if the domain owner puts up a good fight. I own a fansite and was challenged several times, and I still have the domain and they even sent me publicity photos to put ono the site.

So it comes down to usage. Use it in bad faith and you will probably lose, use it in good faith and you have a chance at keeping it.

 

[Erdy]

I have read the wipo desicion on BruceSpringsteen.com. I disagree with their desicion. There are lots of unlogical arguments on that desicion. I think Bruce Springsteen should challange that desicion if there is a way.

They say the guy didn't register .net or .org versions even though he could have, so this makes him a nice guy. Bullcrap. All good domainers know that you leave the .net and .org on purpose so you can get more type in traffic if those are taken and become popular websites. In fact this scenario was very likely and indeed it is exactly what happened. The wipo guys should learn a lesson from domainers about .net and .com's. It appears it didn't do any good Bruce Springsteen registering the .net version.

As the guy predicted the .net of that name was taken by the Bruce Springsteen and obviously this must have helped the guy to get more type in traffic. I also found it unlogical that they don't undertstand the .net or .com extensions.


http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1532.html

 

[DNQuest.com]

Why do you think it is wrong? The panelist did a very good job in being partial and The Boss was unable to prove all 3 elements to have a successful WIPO challenge. Domain owners need to applaud this decision because this gave a clearer definition of "fair use" and also made complainants responsibile to showing bad faith instead of just saying it was bad faith.

 

[Erdy]

I think it is wrong because of the following reasons:

1. WIPO's desicion is based on the TM holder not having a lost. They say the musician uses the .net versio so he is fine. Instead what they should consider is the domain owner having a gain. If somebody uses your name without permision and gains something by doing so this is wrong.

If I'm using applecomputers.com and apple can't prove they have lost anything then following their logic I should keep that domain. On the other hand I'm benefiting from their name. This is what they should count. Apple doesn't necessarily lose something. Their logic is completely unlawful.

If you follow their logic this means as long as a TM owner has its own website and does its business then he is fine and everybody else can have other extensions. Then we should be able to register microsoft or google for extensions they are not using.

On the other hand I even don'T agree with their argument that the TM holder did not have any lost. Because he is using the .net doesn't mean he didn't have any lost. Hove come? They mention about BruceSpringsteen.net being among top five search resulst so they say people can find the official website easiliy. The problem with this argument is that not all poeple search on search engines. People just type this name. They type BruceSpringsteen and then they hit CTRL+ENTER on their keyboard. This is type in traffic. I think the wipo guys don't understand type in traffic which is especially a case with peoples names. Every famous persons .com domain has type in traffic by definition.

2. They don't understand the domain extensions. .com is the main extension for domains. .net is secondary. If Bruce Springsteen can not get BruceSpringsteen.com then this is simply wrong because when you think about domains, when you think about the internet you think about .com

Every unregistered TM holder (musicians, authors etc) should have their .com's automatically without even any argument.

Because I'm a domainer doesn't mean I will applaud a wrong desicion.

 

[DNQuest.com]

Here is the big flaw in your arguement... there was no commercial gain for the domain owner. It was used under "fair use" and is protected as free speach. It was a fansite and fansites are protected. As far as other extensions, it was pointed out that if the domain holder was actually trying to hold the name hostage, he would of registered the other versions too. The domain did not do that.

"Every unregistered TM holder (musicians, authors etc) should have their .com's automatically without even any argument."

This statement shows your bias in this matter. If the celeb doesn't bother to register them, a fan should be able to do so (provided it is a true fansite). You arguement is based on what you believe in and not the criteria set forth in UDRPs. REmember, the internet was design for the world to share, not an avenue for a few select people.

 

[Celdric]

"....REmember, the internet was design for the world to share, not an avenue for a few select people...."

Well, that's very true DNQuest. And I can only agree.

I'm just wondering what you are thinking about the fact that a few selected people/companies who have the capital are buying and owning hundreds of thousands if not millions of domain names using them to turn the web more and more in a giantic spam pool. While at the same common poeple who want to build up a real website can't find any normal sounding name anymore.
Not that I have a personal problem with that. I own the domains I need.
I just think the domain name reality on web is far away from what the intension once has been. Well, only a thought and probably off topic here.

Well, I also agree that artists or celebrities shouldn't automatically have their coms.
Everyone can state about himself that he is a writer, dancer, singer or other celebrity. Sure, we could say we limit it to famous people only. But then we are in trouble to explain what "famous" means because there isn't a kind of official definition.

Btw, I'm wondering if there is any example that someone contacted a celebrity and got the permission to use his/her name. Or may be there is a list somewhere on web regarding celebrities or companies who don't mind "affiliates"?

 

[Barrucadu]

If the term is generic, and dosnt make you immediatly think of the band, register it if you want.

 

[IAmAllanShore]

But then we are in trouble to explain what "famous" means because there isn't a kind of official definition.

Good post, well written.

I'll take slight issue with the quote above, only because there is and "official" definition:
http://dictionary.reference.com/browse/famous (Depends on the jurisdiction what dictionary they use, but still...) The term's plain meaning as read is always the first stop to define a term as it is used. Mind you in the cause of "famous" there are some more complicated tests, but there is a test in place (Geographic limits, timeframe, etc.).

Best,

-Allan :gl:

 

[Celdric]

Thanks for your kind comment. Well, there are definitions, admitted. But let's throw them into a circle of domain lawyers and then watch what happens. :lol:

 

[DNQuest.com]

In reality, it is easier to shows rights to a name in a UDRP than it would be in a TM registration. All the celeb has to do is convince a panel that they do business under their name. Panels can be quite liberal in what they think is a TM. So normal rules of "famous" is subjective.