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Trademarks

Labeled as trademark in Legal Discussion started by wesley sweatman, Jul 14, 2019.

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  1. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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    Definition of trademark:

    Trademark infringement is the unauthorized use of a trademark or service mark (or a substantially similar mark) on competing or related goods and services. The success of a lawsuit to stop the infringement turns on whether the defendant's use causes a likelihood of confusion in the average consumer.

    When infringement occurs, a trademark owner (the plaintiff) may file a lawsuit against the infringing user of the same or similar mark (the defendant) to prevent further use of the mark and collect money damages for the wrongful use. An infringement action may be brought in state court or in federal court if the mark in question is protected under the Lanham Act, which applies to both registered and unregistered marks that are used in commerce that Congress may regulate.

    The success of an infringement normally turns on whether the defendant’s use causes a likelihood of confusion and so weakens the value of the plaintiff’s mark. A mark need not be identical to one already in use to infringe upon the owner’s rights. If the proposed mark is similar enough to the earlier mark to risk confusing the average consumer, its use may constitute infringement if the services or goods on which the two marks are used are related to each other—that is, they share the same market. For more on the standards of confusion see the articles and questions, below.

    I have a similar issue with my domain, Lambo.xyz. I regged it knowing by checking with trademarks that there was no live match with it on automobiles. I found out today there is a live match on it for hair and grooming products.

    Please explain to me who thinks of hair products when the word Lambo comes up? Who? Well, I know we all thought Lamborghini, rite? Well. if you look at this link here you will understand what im talking about.

    Please discuss this and come up with a civilized answer for yourselves or for me why we are running like scared Japanese from Godzilla about this subject.

    The only true trademark issue with domains would be if they had a trademark on domains, correct?

    I guess my point is im selling as a finesse domain of dreaming of lamborghinis and there should be no confusion as to whether its about hair product or not. ty.
     
    Last edited: Jul 14, 2019
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  2. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    First off, "Lambo" is very well known to be associated with Lamborghini, and is a registered mark in several jurisdictions, such as....

    https://euipo.europa.eu/eSearch/#details/trademarks/006113451

    LAMBO


    (210)/(260)Application number 006113451
    (270)Application language de
    (220)Application date 2007-07-19
    Second language en
    Application reference EMLAMO1201
    Trade mark office EUIPO - EUIPO
    (190)Registration office EM
    Receiving office number E60499634
    (151)Registration date 2008-04-28
    Receiving office date 2007-07-19
    (141)Expiry date 2027-07-19
    (550)Trade mark type Word
    (551)Kind of mark Individual
    (511)Nice classification 7,9,12
    Current trade mark status Registered
    Status date 2008-12-26
    Opposition period start date 2007-12-10
    Opposition period end date 2008-03-10

    Applicant identifier 49923
    Organization name Automobili Lamborghini S.p.A.
    (842)Applicant legal entity Legal Entity
    (811)Applicant nationality code IT
    Applicant incorporation country code IT
    Address country IT
    Street Via Modena, 12
    City Sant' Agata Bolognese (Bologna)
    Postcode 40019

    --------------------

    While your initial note on trademark infringement is accurate, it is not particularly relevant to the things that we are generally concerned about with domain name registrations.

    "Trademark infringement" - i.e. the use of a mark or something close to it, on competing goods and services, is not a required condition for a finding of abusive domain name registration or cybersquatting.

    Abusive domain name registration or cybersquatting is another species of "things you can do to violate the rights of trademark owner." It is a distinct offense, separate from trademark infringement.

    Maybe I can explain this another way......

    Let's define the crime of "arson" as "setting someone's house on fire."

    Okay, so you see a house... you break down the door... you go inside... and you steal all their stuff.

    Saying, "Well, okay then, I didn't commit arson" is an accurate statement, but it's also not relevant to what you were doing, which was burglary.
     
  3. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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  4. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    The trademarkia database only covers US marks. I posted the data about the EU registration to demonstrate the lack of coverage by the trademarkia database.

    I don't know what "that way" means. The sale lander for the domain name says this:

    Screen Shot 2019-07-16 at 11.09.28 AM.png


    "Category Automotive"

    So a domain name corresponding to a very well known trademark of an automobile company was registered and offered for sale on the proposition that it has something to do with automobiles.

    That's about as simple a case as they come, for the trademark owner... if they gave a crap about the .xyz TLD or went chasing after every money-losing domain name registration.
     
  5. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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    oh ok, ty.
     
  6. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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    ok Mr. Berryhill it doesn't say automotive now. ty.
     
  7. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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  8. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    it really doesn't make a whole world of difference.

    Upthread where you said:

    That's the whole point. Yes, probably among most people looking at the domain name who are familiar with the fact that "Lambo" is used worldwide to refer to Lamborghinis, and is in fact used as a mark by Lamborghini, that's immediately what they think of when they see that.

    No.

    There are, literally, around 2000 domain cases a year decided by WIPO, and another chunk of domain cases decided every year by the NAF. They aren't kept secret. They are published for anyone to read.

    Take a dive into some cases and see how many of them "had a trademark on domains":

    https://www.wipo.int/amc/en/domains/decisionsx/index-gtld.html
     
  9. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    Personally I think you're digging too deep, nobody will be interested in an xyz on the corporate end and even a fan site for lambo will probably not ruffle any feathers. Had it been the .com or an equivalent ccTLD then you would have had a lot more reasons to worry. So for a straight hand reg just proceed with whatever plans you have for it and hopefully it sells. Worst case, someone takes offence and you give it up.... big deal. :xf.smile:
     
  10. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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  11. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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    Its ok MapleDot, lawyers' passion is to argue what they learn. Im not trying to stop passion.

    PASSIONFRUIT IS DELICIOUS. :)
     
  12. MapleDots

    MapleDots Domain Properties 2010 - 2019 VIP

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    It's pretty safe to say nowadays almost nothing is safe from a trademark challenge. If a corporation wants to challenge you then you better be able to afford legal. They may be right or they may be wrong in their challenge but in the end you need to defend, and you need to have money to do so.

    If one wants to feel completely secure in domaining then one better pick a safer way to make money. Personally I allocate a legal fund but I am also not silly enough to pursue what I would call a PASSION call. I weigh each situation on it's own merit and for lambo.xyz I would simply step aside because odd's of it ever becoming a significant payday are too low anyways.

    Now if I had lambo.com... Mr Beryhill would be the type of individual I would hire to defend me. That said a lot of domainers start out arguing for themselves and by the time the lawyer gets the case the first row of nails have already been nailed into the coffin.
     
  13. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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  14. cabotower

    cabotower Member VIP

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    uniregistry-lambo regd in 48 extsO_o
     
  15. Super-Annuation

    Super-Annuation Restricted Blue Account

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    This is a tough question, and I guess both sides could argue. It just depends on who can afford the better argument; who can use law better

    Latina/Intel .com found trouble after using the word Intel. They were a news/information service, which Intel lawyers must have viewed as causing brand dilution, or infringing Intel's right to the word. Similar story for use of the word Mac.

    A person protected by IP laws is obligated to protect their brand, and so in the above case, successfully did just that.

    I purchased Oracle/ Intel, and realised what I had done after the purchase. I stupidly thought "meh, maybe a fortuneteller would be interested." However, law is not so straight and simple. I'm learning, so will look into it more...

    I guess my answer is you can use the word, but it can also be challenged. Genericized trademarks like appstore are even off limits for me now.

    Goodluck
     

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