Bick.us and Biostat.us - Discussing TM issues

[hhunterjr]

I’ve recently registered Bick.us and Biostat.us. These two names are trademarked, but I think that there will not be any TM infringement issues because the two names can be put to many non-infringing uses. I just wanted to see if anyone else had any thoughts.

I’ll start by discussing TM infringement. Trademark infringement is the commercial use of the same or similar mark by another with respect to related goods or services which is "likely to cause confusion" with respect to actual or potential customers of the trademark owner's goods or services.

Many factors are considered in determining the existence of a "likelihood of confusion" including the similarity of the marks and their commercial connotation, the similarity or relationship of the respective goods or services, the commonality of trade channels, the sophistication of purchasers, the fame and strength of the trademark owner's mark, the number and nature of similar marks in use on similar goods or services, and the existence of actual confusion. No one factor is necessarily controlling and in general infringement is evaluated on a case by case basis based upon the totality of circumstances.

Remedies include injunctive relief to prohibit infringement, the impoundment and destruction of goods bearing infringing trademarks, an infringer's profits, the trademark owner's actual damages and court costs. Attorney's fees may be awarded in exceptional cases

In general I would say that it is better to stay away from Trademarked names - especially the more famous ones like Coca Cola, IBM, ToysRus - etc. These marks are so strong, well known, and famous that any domain that is similar in sound will probably create a TM infringement situation.

However, the bick TM and the biostat TM are not that well known.
The bick TM deals with clothing. Yet websites for bick.com, bick.net, bick.info, bick.biz exist and don't have anything to do with clothing. It would probably be hard for the bick TM owner to prove likelihood of confusion with these other businesses that operate through bick.com, bick.net, bick.info, bick.biz.

I think that the same holds true for the biostat TM. The Biostat Trademarks deal with computer software, a urea monitor, and scientific fermentation units used for process control applications. The existing websites at biostat.com, biostat.net, biostat.org, and biostat.co.uk don’t have anything to do with the Biostat Trademarks or the industries listed in the goods/services section of the Trademarks. It would probably be hard for the biostat TM owner to prove likelihood of confusion with these other businesses that operate the websites listed above.


I think that a court would definitely have to go through the traditional seven factor "likelihood of confusion" analysis to prove TM infringement for these marks. (see above discussion of TM infringement)



Summary:
Although the TM issues for bick.us and biostat.us limit the potential uses for these domains, the TM does not totally rule all usage of the domains. I'm pretty sure that non-infringing uses can be found for these domains (as evidenced by the sites as bick.com, bick.net, bick.biz, bick.info plus sites at biostat.com, biostat.net, biostat.org, and biostat.co.uk).

These are my thoughts. Any comments or opinions?

[dtobias]

I think what a judge or UDRP panelist will ask is not whether a non-infringing use can be dreamed up for these domains (one practically always can be), but whether you actually have made use, or credible plans to do so, of the domains in question in such a noninfringing manner. If you registered them first and tried to think up an excuse and use later, you'll probably lose if challenged.

[hhunterjr]

Dtobias's comment is credible and I hadn't thought about it that way before. I will have to do more investigation.

Any other opinions?

[jberryhill]

Dan hits the nail on the head, as far as practical considerations under the UDRP. All kinds of trademarks are "capable" of non-infringing use. The basic question under the UDRP is why did *you* register *this* domain name, and what can you show us to back up this stated intention, so that we can distinguish it from a post-hoc rationalization?

The reason for enacting the ACPA was that this thing being driven at under the term "cybersquatting" didn't neatly fit into infringement or dilution. While the Panavision.com case was a dilution case, everyone pretty much recognized the problem of finding "commercial use" of the domain name, and nobody was particularly happy with the court's view of offering the domain name itself for sale as "commercial use" of the mark.

In instances of non-use of the domain name, then an unstated policy under the bulk of UDRP decisions is to look at the degree of inherent distinctiveness of the asserted mark. There is a disordering of the traditional ranking of trademark strength at work, though. It turns out under the UDRP that marks which are descriptive, but have acquired strong secondary meaning, are stronger than arbitrary marks. The reason is that for a "dictionary word" case, one cannot presume a predatory intent against the owner of an arbitrary mark. However, you cannot argue an intent to use a descriptive, albeit distinctive, mark in its descriptive sense, since that amounts to an admission of an infringing intent - and to argue that one intended to make arbitary use of a descriptive mark is not going to be very credible without some strong evidentiary support.

Getting back to the panavision.com case, the domain name was being used to display pictures of the town of Pana, Illinois. There are follks around these parts that would think, "Hey, that's a fine non-infringing use... using 'Pana vision' to show pictures of Pana." Such a "non-infringing use" assumes that the factfinder is a moron.

[hhunterjr]

These are questions to ponder for jberryhill, dtobias, and others . . . I'd like to hear your thoughts.


Question 1:
What if one registers the domains with the intent to sell to an end user who will not infringe the existing Trademarks for bick and biostat?

Question 2a, 2b, 2c:

(a) Also what if one registers the domains with the intent of just owning the domains. I think that a person can own any domain that he wants to own - so long as he fits meets the requirements for registration. Anything wrong with this?

(b) If someone or some company later approaches the domain owner and wants to buy the domain for a specified non-infringing purpose - is there anything wrong with this?

(c) If the TM owner approaches the domain owner and wants to buy the domain- Is there anything wrong with this.

In question 2c, I know that if the domain owner approached the TM owner about ransoming the domain - then that would probably be considered as "bad faith" and would not be a smart move.

I'd like to hear your thoughts.

[jberryhill]

I am not going to specfically address the two domain names you mentioned, and its not clear whether you are asking under the UDRP or the ACPA. For the purpose of this discussion, I will assume the UDRP, since the analysis is shorter, and I'm tired.

In general, questions of these sort turn on the inherent distinctiveness of the mark.

If someone registers, say, xerox.tld and then says they intend to sell it to someone who will not infringe the Xerox mark, nobody is going to buy that argument. Xerox is a famous fanciful, and thus inherently distinctive, mark which has no conceivable meaning apart from its use as a trademark.

Question 1 was addressed squarely in Cello I - Selling "apple.com" to someone who might want to use it for the red fruit is fine. Selling "applecomputer.com" is not.

Moving on to the 2's...

Registration "just to have the domain name" is indistinguishable from registration with the intent to deprive the trademark owner from the use thereof. Panels will tend toward "Non use" as "bad faith use", in the absence of a defense along the lines of lack of distinctiveness, shortness of time to develop, and a few other minor defenses to that line of attack.

Overall, it looks as if you have arrived at the "strategy" of simply holding domain names and waiting for the TM owner to come a-knockin', so that you can then claim that *they* initiated the discussion of sale.

Without more on your side, that simply doesn't wash.

Issue - solicited sale offers:

http://arbiter.wipo.int/cgi-bin/doma...ch&legal=11870

[hhunterjr]

Thanks jberryhill and btobias for your credible comments.

I generally stay away from TM names, but I thought it would be okay in this case of bick.us and biostat.us since the existing internet websites for these domains in .com, .net, .biz, .info., .co.uk. - have nothing to do with the TMs.
It looks like I may have to reconsider that decision.

In view of your legal arguments, it might be easier for me just to eat the registration fee on those two specific domains than to have to face any type of legal action by the TM owners under the ACPA or UDRP.

I'll do more research myself though before I make a final decision on giving up on selling those two specific domains.

My entire list of domains is at http://www.domainterritory.com

Take care,

hhunterjr@yahoo.com
http://www.domainterritory.com

[TexasFilly]

BioStat.us is good..
market it direct..

did you get the email i sent you?

worry not.. what the nay-sayers post..

it's a good worthy name..

industry specific..

it'll sell..

just market it direct..

you'll do fine.