Registering someone's tm by "coincidence" - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**lukeeales** · 07-10-2004, 08:43 AM

Hypothetical scenario:

Is it illegal for me to register Travelodge.com, trademark wise? Odge is a word I made up, it's a nickname for Europe. So the domain means Travel Europe. Therefore this is legal.

........?

Is it always infringing on trademark/copyright if you have a domain such as above, even if it is "not intended" to profit from the larger company?

**draqon** · 07-10-2004, 11:49 AM

No, you can't use domains that are one or two letters different than a famous trademark and expect to avoid litigation or a WIPO suit. If you use a domain that is so close to a trademark, you will probably always lose, especially if you use it for the same area of commerce as the holder of the mark.

**namedropper** · 07-10-2004, 12:57 PM

Quote:

Originally Posted by lukeeales

Odge is a word I made up

Any defense against trademark infringement based upon such shoddy and ridiculous reasoning has no chance.

I mean, come on, get real.

**lukeeales** · 07-10-2004, 12:58 PM

**nameslave** · 07-10-2004, 01:06 PM

For a famous trademark (e.g. Travelodge), it is difficult to convince the panel or judge that you have never heard of the name before and register something identical or confusingly similar.

**lukeeales** · 07-10-2004, 01:21 PM

So if one did register a domain containing the name of such a well known company, what is the procedure? Do I get sued? Or is the account removed from my posession? Or... Can I just sell it on for a profit to that company?

I apologise if this has been covered elsewhere, but I can't find a thread with the information I need at the moment.

**Steen** · 07-10-2004, 01:32 PM

If they want the domain I believe the options are:

1) C&D you and hope you hand it over
2) Go to WIPO and launch a complaint
3) Go through the courts instead of WIPO
4) Try and buy the domain off you

Due to cost saving, MOST of the time they will C&D you first, and should you not hand it over, WIPO you. That would be the cheapest route I believe.

I'm not a lawyer though..

**lukeeales** · 07-10-2004, 01:44 PM

Quote:

Originally Posted by Steen

If they want the domain I believe the options are:

1) C&D you and hope you hand it over
2) Go to WIPO and launch a complaint
3) Go through the courts instead of WIPO
4) Try and buy the domain off you

Due to cost saving, MOST of the time they will C&D you first, and should you not hand it over, WIPO you. That would be the cheapest route I believe.

I'm not a lawyer though..

What is C&D?

**draqon** · 07-10-2004, 08:43 PM

cease and desist

**funkker** · 07-11-2004, 06:58 AM

is there actually somebody who was really sued for trademark infrigment ?? and what was the result ?

**Bob** · 07-11-2004, 10:27 AM

Quote:

Originally Posted by funkker

is there actually somebody who was really sued for trademark infrigment ?? and what was the result ?

I have been sent four C&D letters.

One - they backed off after I scoffed at their C&D letter.

Another - I turned over the name. I thought I had a 50/50 chance at best to keep it.

Third - They bypassed WIPO and went straight to Federal Court after I had bowed to all of their demands except pay what they wanted in statutory damages. They got their domain, but not the extra money they wanted.

Fourth - Is in the works now. It is over a 3 LETTER name. I cannot say much more on the subject at this time, but will let you know the result.

-Bob

**Steen** · 07-11-2004, 03:54 PM

Quote:

Originally Posted by Bob

I have been sent four C&D letters.

One - they backed off after I scoffed at their C&D letter.

Another - I turned over the name. I thought I had a 50/50 chance at best to keep it.

Third - They bypassed WIPO and went straight to Federal Court after I had bowed to all of their demands except pay what they wanted in statutory damages. They got their domain, but not the extra money they wanted.

Fourth - Is in the works now. It is over a 3 LETTER name. I cannot say much more on the subject at this time, but will let you know the result.

-Bob

Bob, your back?!

Yay!

**worldnames** · 07-22-2004, 07:14 PM

Have seen an example where the big player comes out with major legal teams and threaten the individual but are willing to buy the domain/s at a reasonable price as in the end a few Â£100 or $ is better than a long drawn out expensive legal battle.

**bladex5k** · 07-22-2004, 10:53 PM

LoL, I think I'm just going to stick with unique domains, haha.

**seeker** · 07-25-2004, 04:45 AM

if it goes through wipo, does the domain owner pay for the case if he/she loses?

**HOWARD** · 07-25-2004, 04:42 PM

WIPO only has the power to cause the transfer of the domain. It cannot assess costs or damages.