question Trademark rights - where to put the keyword?!

[Andreas B.]

Hey There,

so, I had some experience with 2 companies, namely facebook and redbull,
in which their lawyers contacted me and gave me some weeks to delete the domains, which I registered using their names.

That is somewhat long ago, 7-8 years.

In the case of facebook I had a keyword before it (xxxfacebook.com)

in case of redbull I had two keywords afterwards (redbullxxx).


So, does anyone know if both - having a keyword before a reg. TM and after it - is not allowed??

I ask because I saw a domain/website having a keyword before a reg. TM, and still working.




Thanks for putting any light into that shadow.


Edit: I didn't want to mess with their lawyers, so I just deleted them
(never could find out who was right, who not... - I guess me?)

 

[NickB]

TM's can cover a wide variety of categories - so in your example having a keyword before or after the TM word does not necessarily mean the domain/website is violating any TM if it is covering a different category to the one that is trademarked....as you have not provided the domain or website it is just guess work if it or isn't

In your case it is pretty blatant...... Facebook & Red Bull are well known brands and it will not matter if it is Facebook / keyword or keyword / Red Bull (or vice versa) it most likely will be violating their TM

It can even go under "confusingly similar" if it went to UDRP - even if the domain was registered before a TM was obtained, a company that registered their domain before the disputed one can try and claim it from the owner if it is "confusingly similar"

In short it is complicated, seek advice from a solicitor/lawyer when in doubt and don't even bother registering domains that have other company names in them - why bother when there are so many alternative domain niches to explore?

*I'm not a lawyer the above is just my take on it.......

 

[Andreas B.]

TM's can cover a wide variety of categories - so in your example having a keyword before or after the TM word does not necessarily mean the domain/website is violating any TM if it is covering a different category to the one that is trademarked....as you have not provided the domain or website it is just guess work if it or isn't

In your case it is pretty blatant...... Facebook & Red Bull are well known brands and it will not matter if it is Facebook / keyword or keyword / Red Bull (or vice versa) it most likely will be violating their TM

It can even go under "confusingly similar" if it went to UDRP - even if the domain was registered before a TM was obtained, a company that registered their domain before the disputed one can try and claim it from the owner if it is "confusingly similar"

In short it is complicated, seek advice from a solicitor/lawyer when in doubt and don't even bother registering domains that have other company names in them - why bother when there are so many alternative domain niches to explore?

*I'm not a lawyer the above is just my take on it.......

Thank you.

Yes, specific terms like facebook or redbull are too well known, to put a keyword on top and surf with it.

I think sth like oracle or equal may could be "pirated".

 

[sircc]

So, does anyone know if both - having a keyword before a reg. TM and after it - is not allowed??

Isn't that obvious to you? Taking on corporate lawyers is a risky proposition.

 

[NickB]

Isn't that obvious to you? Taking on corporate lawyers is a risky proposition.

and expensive......

 

[karmaco]

The basic thing is it has to a pretty generic word used in countless other names and not recognizable as being one single company.

Purple.com mattress company does not eradicate the countless names registered starting with Purple. But should you put PurpleMattress or PurpleBed you now might have an issue as you are in their trademarked category. Hope it helps.