Legal conundrum

[domainduck]

I have received a C&D letter from a corporation that owns the trademark for a well established and well known brand. For the sake of this question, the name is 'Super Star' The company has multiple trademarks in multiple classes.

However, there are also a few other companies that have trademarked 'super star' in different classes, so the mark is not exclusive.

I registered 'SupaStars.com' and the corporation is claiming confusion and dilution of their famous mark - 'super star' v 'supa star'

But, another corporation owns a trademark on 'supa star', which I did not discover until now. Maybe the company that owns the 'supa star' trademark could make a case against me for 'SupaStars.com', but how can the 'super star' people come after me?

Are they not pushing the law by trying to take a domain name from me that is trademarked by another company?

Any legal feedback / experience would be appreciated.


quack

[LewR]

Unless you are very well versed in this, I would suggest handing it off to an attorney for evaluation before you do anything. On face value, it sounds like they may be just blowing steam.

Wow - just saw the spell check....LOL

[ShaunP]

quack ... and you registered this name without ANY idea of the potential TM problems ... and were going to use it for a non-profit website or a an incredible new product totally unrelated to any known TM'd product or service ... right?

Shaun

[domainduck]

Originally posted by aactive
quack ... and you registered this name without ANY idea of the potential TM problems ... and were going to use it for a non-profit website or a an incredible new product totally unrelated to any known TM'd product or service ... right?

Shaun

No ... I registered the name, because I saw value. It's an attractive name. In fact, the dot-net has been in use by a web design company since 1997 and the trademark holder has not bothered them even though the trademark precedes the domain name registration.

Here's the point - Some trademark holders are under the impression that their mark gives them universal rights to clobber or attempt to cloober, or push around, or intimidate anyone who even comes close to their mark. That is a bunch of crap, but most resellers do not have the money to defend themselves, so this tactic often works.

There are over 40 different trademark classes and therefore, the potential for over 40 different trademarks on the same word/words. I have been taken to task in the past and paid to defend myself. I would pay again if I thought it was worth my time and money.

In this thread, I am simply looking for general feedback, not cynicism.


quack...

[Garry Anderson]

"However, there are also a few other companies that have trademarked 'super star' in different classes, so the mark is not exclusive."

Dear Duck - if you are not doing anything unlawful then it seems the corporation that sent C&D letter are overreaching their trademark.

You could legally use 'super star' for a new business - providing you are not 'passing off' as trademark.

Ask a lawyer - you can legally use any word, words or initials to start a new business without registering a trademark - providing you are not passing off, of course. Take for example the word 'apple'. It is legally used by thousands of businesses - large and small all over the world. Indeed, it is impossible that they all register themselves as trademarks - they are bound to conflict with many others, being confusingly similar. In my local phone book alone, there are at least five using this word - two garages (seems not connected), a car centre, fruit growers and a decorating firm.

Indeed - you could use your 'super star' for a personal site. Everybody has legitimate rights to use ANY words for ANY legal purpose they wish - true or false?

The authorities (US DoC, ICANN and UN WIPO) made UDRP for easy overreaching because they are corrupt.

Corporations like UDRP because it allows them unlawful trademark powers and lawyers like UDRP because they make money from it.

Fact - authorities know how to prevent consumer confusion between registered trademarks and domain names - as shown on WIPO.org.uk

[mole]

Hey Garry, what took you so long?

[Garry Anderson]

Greetings my fellow comrade Mole

It is nice to speak to you again.

Other forums are a bit dead - including favourites forum.icann.org and icannwatch.org - so thought dnforum would supply essential mental stimulus.

I am still flabbergasted that the authorities are totally without honour such that they allow corporations to break trademark and competition law like this.