question Trademark Question

[Mlebo]

Good evening,

I had a question regarding trademarks. Does a keyword dot extension ( For example: Music dot direct) have a trademark issue with a trademark on MusicDirect?

If so you this would have to apply to .com also. For example if I had a trademark on musiccom, Would music.com also have a trademark issue?

Thank you in advance.

 

[Name Trader]

You only have a problem if you infringe on their actual trademark. Unless they want to bully you through the courts of course.

 

[Dominique]

Good evening,

I had a question regarding trademarks. Does a keyword dot extension ( For example: Music dot direct) have a trademark issue with a trademark on MusicDirect?

If so you this would have to apply to .com also. For example if I had a trademark on musiccom, Would music.com also have a trademark issue?

Thank you in advance.

You may find this article useful:
https://giga.law/blog/2015/08/18/when-is-the-top-level-domain-tld-relevant-in-a-domain-name-dispute


Also, WIPO Overview of WIPO Panel Views states:

1.11 Is the Top Level Domain relevant in determining identity or confusing similarity?

1.11.1 The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

1.11.2 The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. The meaning of such TLD may however be relevant to panel assessment of the second and third elements. [See in particular sections 2.14 and 3.2.1]

For example, in cases where the combination of the mark and the TLD signals potential legitimate co-existence or fair use, and where the related website content supports such inference, panels would tend to focus their inquiry on the second element. On the other hand, in cases where the TLD corresponds to the complainant’s area of trade so as to signal an abusive intent to confuse Internet users, panels have found this relevant to assessment under the third element.

1.11.3 Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a mark “TRADEMARK”, the domain name <trade.mark> would be confusingly similar for UDRP standing purposes).