Can a Trademark holder abuse his Trademark

**Dominata** · 03-04-2003, 06:16 AM

If a trademark holder spells his trademark wrong in order to get additional listings on search engines.
Could this in any way jeopardize his trademark or is this a legal tactic?

I have a non commercial website and I regged the domain before the TM owners first use. He has one spelling and I own the other.

If this intentional mispelling, by the trademark holder, would cause confusion to their customers could this be used in a defense in a UDRP or other legal forum that they contributed to the confusion more that the name.

**dtobias** · 03-04-2003, 07:52 AM

Originally posted by Dominata
I have a non commercial website

Then I trust it's in a TLD that is logical for this, like .org, .info, or a country code, rather than one that falsely implies commerciality?

Anyway, you don't give sufficient information to judge your potential dispute... you imply that there's similarity between your name and one that is trademarked, and that a "creative misspelling" is involved somehow, but you don't say whether your name or the trademark owner's is the one that matches the correct English (or other language?) spelling of the word in question, or for that matter whether it's your domain name or the trademark owner's that matches the (mis)spelling of the word that is trademarked. Without such information it's pretty much impossible to judge the case.

**dtobias** · 03-04-2003, 08:06 AM

For instance, if somebody owns a trademark on "SHOOZ" for a particular kind of shoes, and they own both the domain shooz.com (to reflect their trademark) and shoes.com (to get type-in and search-engine traffic from those who perversely insist on spelling shoes "SHOES" instead of the way-kewl trademarked way), then if you owned shoes.org or shoes.info and used it for a noncommercial site relating to shoes, you most likely would have nothing to fear from the trademark owner. However, if you registered shooz.org or shooz.info, you might lose it in a UDRP.

**Dominata** · 03-04-2003, 05:34 PM

There is really no dispute per say.
I thought it was an interesting question.

The Question was.....Can a Trademark holder abuse his Trademark by mis-spelling it? (for example.)

"Buy MacDonald's Hamburgers over 10 zillion sold." on a foods website.
as apposed to McDonalds (TM) in order to take search engine slots in the MacDonalds searches as well as the McDonalds

(for arguments sake let's say McDonalds(TM) does not own MacDonalds.com domain name.)

What are the responsibilities of owning a Trademark if any.

As far as the tld of the domain (who really cares)

**FineE** · 04-02-2003, 09:55 PM

Then I trust it's in a TLD that is logical for this, like .org, .info, or a country code, rather than one that falsely implies commerciality?

There are many reasons for a non profit or non commercial site to use a .com. The reality is that many people still assume a domain ends in .com. I once heard a non profit orgainzation was given a interview on CBC radio here in Canada. At the end the representative from the non profit gave the web address. It was a .org. Then the radio host ends the interview by repeating the web address again only changing the .org to .com!

Since then my advice to any non profit site is register the .org and the .com. Use the .org for the site and redirect the .com to the .org.

**Sportacle** · 04-06-2003, 08:42 AM

Maybe they never registered it...quite possibly they are now the registrant because someone else was a prior registrant but faced the threat of UDRP and decided to hand it over instead.