Need clarification, from an experienced lawyer would be fabulous!

[harleyx]

Starting a new site, registered what is a great domain name for the site.

Registered as my[dictionaryword][dictionaryword2].org

Here's the facts:

[dictionaryword][dictionaryword2] is a registered trademark, however not with the my in front.

The .org had just dropped and web.archive.org has it as used to be a phpnuke site which must have been run for sometime because it has 4000+ users.

The .com is registered but doesn't resolve. The .net just dropped, appears to have been registered since 2001 - hasn't had a thing on it i could find.

We aren't emulating their site design or layout in any way, and the purpose of the two sites are very different beyond both being service based.

Would they have a solid case for taking the site? Would we have a solid grounds for defending it?

Feedback appreciated.

[draqon]

1) the fact that your domain has the word My before the trademarked term doesnt mean jack squat. it wont help your case in even the slighest bit, because during a UDRP or a trademark violation lawsuit, the arbitrators ignore words like The and My that are periphery to the central mark.

2) if you are using your domain for an area of commerce that is totally unrelated to the owner of the trademark, and you arent attempting to create confusion regarding whether your site is sponsored or associated with the trademark holder, your case is quite strong.

3) overall we would all need more information to state with certainty that you are on solid ground, but it sounds like you would have no problem winning a UDRP. Your use of the domain is non-infringing, and you didnt register the domain in bad faith.

Disclaimer: I am not a lawyer, and my opinions should not be construed as legal advice. I am however better than a lawyer. you may use my comments as Gospel, basing important business decisions on them. I am seldem, if ever, wrong.

[harleyx]

1) the fact that your domain has the word My before the trademarked term doesnt mean jack squat. it wont help your case in even the slighest bit, because during a UDRP or a trademark violation lawsuit, the arbitrators ignore words like The and My that are periphery to the central mark.

2) if you are using your domain for an area of commerce that is totally unrelated to the owner of the trademark, and you arent attempting to create confusion regarding whether your site is sponsored or associated with the trademark holder, your case is quite strong.

3) overall we would all need more information to state with certainty that you are on solid ground, but it sounds like you would have no problem winning a UDRP. Your use of the domain is non-infringing, and you didnt register the domain in bad faith.

Disclaimer: I am not a lawyer, and my opinions should not be construed as legal advice. I am however better than a lawyer. you may use my comments as Gospel, basing important business decisions on them. I am seldem, if ever, wrong.

It certainly was not registered in bad faith. In fact we only realized the name was trademarked after it had been registered. However, my main concern is this. Does being in a non-linear field as the other site allow the use of an otherwise trademarked name? We are not in the same field, though both are service based websites. I looked through the USPTO website, though I couldn't figure out which trademark catagory we'd fall under.. none seemed very internet-y to me..

[jberryhill]

Dragon's general comments are accurate, and as accurate as can be in the abstract. Trademark issues are very fact-intensive, and for more definite guidance, further details (of the sort best not posted on a public board) would be important.

[namestrands]

It should also be noted, if the domain was to be used in a manner to cause confusion or could cause the trademark to be brought in to disrepute, then indeed there would be a case.

however, if you where to own a company called microsoft pillows that produced Micro Small Pillows for Hamsters then there would be no current statute for microsoft to claim Trademark infringement against the said company.

[jberryhill]

however, if you where to own a company called microsoft pillows that produced Micro Small Pillows for Hamsters then there would be no current statute for microsoft to claim Trademark infringement against the said company.

Not exactly correct. Repeated principle #34 - "Not all trademarks are as strong as other trademarks."

Some trademarks are weak. Some trademarks are strong, but narrow. But some trademarks fall into a special category beyond strong, and are "famous". A famous trademark is so strong, that even its use on non-competing goods and services would dilute the distinctive character of the mark to the extent that consumers might associate the non-competing goods with the source of the trademarked goods.

For example, if you sold "Delta" brand tampons, then you probably wouldn't generate consumer association with either the airline, or the faucet company. One reason for that is because "Delta" is used by different companies for different things already - i.e. airlines and faucets - so consumers know that "Delta" isn't necessarily the same company in different contexts. "Champion" is a spark plug, clothing, a mortgage company, and about six other things.

But if you sold "Coca-Cola" brand tampons, then the ensuing litigation will bleed you to death. "Coca-Cola" is so strong and so well known, that putting it on just about anything would call to mind what is perhaps the world's most recognizeable trademark. It is indisputably famous.

Fame is not entirely subjective. There is a laundry list of factors that a court will consider in determining whether a mark is famous. However, to cut to the chase here, I don't have a shred of doubt that Microsoft would pass the test.

The US statute here is section 43(c) of the Lanham Act, otherwise known as the Federal Non-Dilution Act. It is codified at 15 U.S.C. 1125(c):

(c) Remedies for dilution of famous marks

(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to -

(A) the degree of inherent or acquired distinctiveness of the mark;

(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(C) the duration and extent of advertising and publicity of the mark;

(D) the geographical extent of the trading area in which the mark is used;

(E) the channels of trade for the goods or services with which the mark is used;

(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;

(G) the nature and extent of use of the same or similar marks by third parties; and

(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

[dmyre]

Wouldn't registering your business name with the county/state provide you with a legal right to the name, if it's used for something not related to the actual trademark?

I wonder if registering your name with the county as Internet Services will work, if you just want to park the name?

[namestrands]

Not exactly correct. Repeated principle #34 - "Not all trademarks are as strong as other trademarks."

But if you sold "Coca-Cola" brand tampons, then the ensuing litigation will bleed you to death. "Coca-Cola" is so strong and so well known, that putting it on just about anything would call to mind what is perhaps the world's most recognizeable trademark. It is indisputably famous.

That would of course be taking it to the extreme, I love the analogy. However coca-cola is a trademark that you really could only use for coca-cola, and anyone using such would indeed cause confusion.

Wouldn't registering your business name with the county/state provide you with a legal right to the name, if it's used for something not related to the actual trademark?

I wonder if registering your name with the county as Internet Services will work, if you just want to park the name?

As long as you can prove that you will not cause confusion, or that you registered such a name as not to profit from the current trademark owner.

Of Course as my Rt Hon friend stated you could not call it Coca-Cola...

[jberryhill]

That would of course be taking it to the extreme

Correct. But the line gets drawn somewhere, and the "microsoft" hamster pillows falls on the same side IMHO.

[harleyx]

Well, that makes me feel somewhat better about it. Thanks for the replies, and the detail Mr. BerryHill. The mark is definitely nowhere near even Delta trademark famous, much less Microsoft or Coca-cola.

I'm curious though, I looked through what I think were all the USPTO classifications for trademarks - there were a bundle - but I found none pertaining to service based websites.. or really any websites/internet based situations. What would a service website fall under assuming it wasn't pertaining to something specific like automotive or airlines?

[namestrands]

Correct. But the line gets drawn somewhere, and the "microsoft" hamster pillows falls on the same side IMHO.

Totally.. Yes.. but the law is not absolute and you could argue any breach of trademark...

And the lines are always being moved and tested.

I guess if you focus on any particular case you could find reasonable doubt.

This subject is indeed a minefield... and should never be taking lightly.. rule of thumb is that if you think their maybe a trademark problem, you should be fore warned.

We could argue the case, even quote case law on this one, but I will concede to agree to disagree as we are both right on different levels.

[Dr. Domaining]

That is a great disclaimer! Ha ha ha.

1) the fact that your domain has the word My before the trademarked term doesnt mean jack squat. it wont help your case in even the slighest bit, because during a UDRP or a trademark violation lawsuit, the arbitrators ignore words like The and My that are periphery to the central mark.

2) if you are using your domain for an area of commerce that is totally unrelated to the owner of the trademark, and you arent attempting to create confusion regarding whether your site is sponsored or associated with the trademark holder, your case is quite strong.

3) overall we would all need more information to state with certainty that you are on solid ground, but it sounds like you would have no problem winning a UDRP. Your use of the domain is non-infringing, and you didnt register the domain in bad faith.

Disclaimer: I am not a lawyer, and my opinions should not be construed as legal advice. I am however better than a lawyer. you may use my comments as Gospel, basing important business decisions on them. I am seldem, if ever, wrong.