Trademark issue?

[DomainBoogie]

Let's say you registered something like NHLgear.com with the intent of selling it. Would this be problematic for a company that used the domain to sell officially licensed NHL goods or did affiliate marketing for officially licensed goods? Can anything be said about this from a general standpoint, or is it a case-by-case thing for each trademark holder? The "NHL" name for this question is just hypothetical.

 

[IAmAllanShore]

Taking a page from a JB post from November due its clear language and plain reading. Also a couple other JB posts that might be of interest.
http://www.namepros.com/2389064-post6.html
http://www.namepros.com/2504014-post7.html


http://domains.adrforum.com/domains/decisions/97302.htm

The domain names at issue are <used-caterpillars.com>, <used-caterpillar.com>, <usedcaterpillars.com>, and <caterpillarsused.com>, registered with BulkRegister.com.

The remaining domain names at issue are <b2bcaterpillars.com> and <used-cats.com>, registered with Network Solutions.

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The domain names are merely descriptive of Respondent’s business (selling used Caterpillar equipment) and thus not confusingly similar. See The Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business).

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Respondent’s website and domain names do not cause confusion with Complainant’s marks and business, given Respondent’s disclaimer and links to Complainant’s official websites that are present on Respondent’s website. See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where Respondent conspicuously informs viewers that his site is not affiliated with Complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of Respondent which precludes any determination that Respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website); See Caterpillar Inc. v Off Road Equip., FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith where Respondent, using the domain name to sell new and used Caterpillar parts through the domain name <catparts.com>, placed a disclaimer on the website indicating no relationship with Complainant’s business).

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The panel directs that the domain name <b2bcaterpillars.com> by agreement be transferred to Complainant. Complainant’s request to transfer the remaining domain names in question, <used-caterpillars.com>, <used-caterpillar.com>, <used caterpillars.com>, <caterpillarsused.com> and <used-cats.com> is denied.