Rather Generic Name Trademarked - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

Nameshub · 10-21-2002, 01:32 PM

I recently registered a domain name without looking for registered trademarks first. I know, big mistake. When I did make the search, I discovered that a large japanese gaming company had registered it as a trademark several years before.

I plan on developing a site (not a case of cybersquatting)for it, but I dont want them coming in later and taking the domain name from me. I tried to find out who to contact in the company about this matter without any luck.

They do not appear to be using the domain name and the name is not famous (I had never heard it for a product before) so my question is this: Can they still take the domain name from me if

1 No bad faith or cybersquatting is involved.
2 I develop a site that is not selling a similar product to the trademark.
3 Put a disclaimer saying the site has nothing to do with that product.

If they do have rights to it, I cant believe they just left it sitting there. It had not recently expired and a site has never been put on it. As big as the company is, they could at least spend a few bucks a years for a domain name right?

**fizz** · 10-21-2002, 01:41 PM

Nameshub, the fact that you intend to develop another line of business to the gaming area should protect you well.

>>>3 Put a disclaimer saying the site has nothing to do with that product.
You would need to ask someone with legal knowledge whether placing that disclaimer is a good idea.

Nameshub · 10-21-2002, 02:06 PM

Ok, good advice. Thanks for the help.

**jberryhill** · 10-21-2002, 02:31 PM

If what you intend to do has nothing to do with the goods and services for which this company may or may not have a trademark, then I fail to understand the point of calling attention to your knowledge of what may or may not be their trademark.

That would be like a fraternity printing disclaimers whenever they publish something during pledge week, stating that they are not selling furniture polish. The text of your disclaimer will, of course, result in the fact that search engines will associate the name of this company with your site. Think about that.

Now, you did "a search". Of what? Of registrations in Japan? In the US? A Google search on the term?

And you concluded they have a trademark why? Because there is something that showed up in the database? Has it lapsed due to cancellation or failure to renew? Is it a Principal or Supplemental registration? Does it include any disclaimers? Is it really a registration, or is it merely an application? If it is an application is it use-based, foreign-registration based, or intent-to-use?

Is the underlying trademark still in use by this company? Or have they abandoned the trademark in fact? Registrations can sit around in the USPTO database until the next Sect. 8&15 renewals are due. That does not necessarily mean that they still maintain a trademark.

This stuff is not rocket science, but it is certainly not as cut-and-dried and black-and-white as folks tend to believe or wish it were.

Nameshub · 10-21-2002, 04:30 PM

marksonline.com

It is a US registered trademark and it is still in effect (not abandoned) according to USPTO data.

Ok, then definitely no disclaimer.

**jberryhill** · 10-22-2002, 12:33 AM

Trademark registrations can outlive actual use of the mark by the owner. For example, my driver's license will not expire for quite some time. I might expire sooner. However, even with an unexpired driver's license, I doubt you will see my corpse tooling around town in the new car I am buying with all of my DNForum Bucks.

**Sheva** · 10-22-2002, 12:40 AM

**Ari Goldberger** · 10-23-2002, 11:57 AM

Domain Name/Trademark issues are very fact specific. It depends on numerous factors including whether or not the domain name incorporates a common word, term, or is descriptive -- factors which help determine the strength of the trademark and degree of protection it affords its owner. A mere tradmark does not give its owner the right to monopolize the term or word.

**HOWARD** · 10-27-2002, 11:05 PM

If you have a legitimate business use for the trademarked domain, which is not confusingly similar to the Japanese use, you would have no difficulty defending it in most forums.

As the UDRP requires both registration AND use in bad faith, you should be able to withstand an attack at some later date.