TM domain..can't use it for forum? - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**adill420** · 01-25-2003, 02:41 PM

I have reciently acquired BMWRacing.com and setup a forum there. What can BMW do? Also what can I do with the domain so it doesn't piss BMW off or should i contact them? I had plans on developing the site for information about BMW and a setup a forum thats about it.

Any input is appreciated. Thanks

Banned: CoolHost.com · 01-25-2003, 03:10 PM

Thank you for taking my advice and posting this domain ... and your inquiry here in the "Legal issues" section! You'll be happy you did, once you begin to receive some input from the membership, and our esteemed legal 'friends. Good move.
Good Luck.

**TrafficMonsterRRR** · 01-25-2003, 03:30 PM

I think you should ask:

What does the BMW racing team call itself? and,
Where does the team hang out website-wise?

Granted BMW is a strong TM. However, if you have not knowingly registered a confusingly similar to a TM use of the TM word (again, what does the BMW racing team call itself is key), then you may have a prayer.

.. i.e if the BMW racing team called itself "BMW Racing" and had a well established site "BMW-Racing.com", you are at high risk of loosing the name at UDRP.

Good luck. It seems some "BMW" site owners are getting away with the word in their domain names, perhaps the lawyers could illuminate. It seems dealers can use it, for example.

**adill420** · 01-26-2003, 12:04 AM

CoolHost: Thanks for the advice.

I thought that if you don't use a TM domain for commercial purpose there should be no problem? The only reason I registered BMWRacing.com was because I had plans on developing a forum (regardless of how many forums are out there). Kindly let me know. Thanks

**pljones** · 01-26-2003, 09:11 AM

Read: http://arbiter.wipo.int/domains/deci...2000-1172.html and http://arbiter.wipo.int/domains/deci...2000-1688.html and http://arbiter.wipo.int/domains/deci...2001-1350.html

**dtobias** · 01-26-2003, 12:00 PM

If you're intending a noncommercial forum use, then perhaps .org or .info would be more appropriate (and easier to defend) than .com?

**jberryhill** · 01-27-2003, 02:58 PM

Also read:

http://www.arbforum.com/domains/decisions/110830.htm
The Complainant has argued that customers are misled or confused when they are routed to the Respondent's site, because the Respondent is not an authorized BMW dealer. But the Respondent has not presented any evidence to the effect that Internet users automatically associate a domain name that combines the mark BMW with a geographic term with an authorized BMW dealer. Furthermore, the Respondent's site is very clear with respect to the nature of its business, so, prima facie, it would appear to this Panel that confusion is unlikely.

**pljones** · 01-27-2003, 03:23 PM

That decision illustrates that the outcome in a UDRP proceeding may change depending on the Panelist assigned to the case. For example, cases w/Diane Cabell frequently turn out differently than cases deciced by Carolyn Marks Johnson. I think this case might have been different with another panelist, so don't take too much comfort in the fact that BMW lost this one.

**jberryhill** · 01-27-2003, 10:44 PM

What is interesting about those two is to look for decisions where Cabell and Johnson were on a panel together. In those situations, it appears that Cabell decides to sit on her hands.

Drewbert · 01-28-2003, 01:53 PM

>cases deciced by Carolyn Marks Johnson.

AVOID HER LIKE THE PLAGUE is a saying that springs to mind.

01-25-2003, 02:41 PM	#1 (permalink)
adill420 DNF Regular Last Online: 08-09-2009 03:55 AM iTrader: (15) Join Date: Dec 2002 Posts: 512 DNF$: 1,057	TM domain..can't use it for forum? I have reciently acquired BMWRacing.com and setup a forum there. What can BMW do? Also what can I do with the domain so it doesn't piss BMW off or should i contact them? I had plans on developing the site for information about BMW and a setup a forum thats about it. Any input is appreciated. Thanks

01-25-2003, 03:30 PM	#3 (permalink)
TrafficMonsterRRR Platinum Lifetime Member Last Online: 10-27-2009 01:26 AM iTrader: (5) Join Date: Aug 2002 Posts: 1,415 DNF$: 2,340 Location: nevaeH emaN niamoD	I think you should ask: What does the BMW racing team call itself? and, Where does the team hang out website-wise? Granted BMW is a strong TM. However, if you have not knowingly registered a confusingly similar to a TM use of the TM word (again, what does the BMW racing team call itself is key), then you may have a prayer. .. i.e if the BMW racing team called itself "BMW Racing" and had a well established site "BMW-Racing.com", you are at high risk of loosing the name at UDRP. Good luck. It seems some "BMW" site owners are getting away with the word in their domain names, perhaps the lawyers could illuminate. It seems dealers can use it, for example. __________________ Wholesale Domain reg. http://www.flynames.com -Free eNom Reseller Acc w/ $8.99 Retail:24hrNames.com --- $7.50 Reseller Acc www.NamesRus.net Last edited by TrafficMonsterRRR; 01-25-2003 at 04:44 PM..

01-27-2003, 02:58 PM	#7 (permalink)
jberryhill Philadelphia Lawyer Last Online: 09-18-2009 01:17 AM iTrader: (1) Join Date: Oct 2002 Posts: 2,987 DNF$: 6,350	Also read: http://www.arbforum.com/domains/decisions/110830.htm The Complainant has argued that customers are misled or confused when they are routed to the Respondent's site, because the Respondent is not an authorized BMW dealer. But the Respondent has not presented any evidence to the effect that Internet users automatically associate a domain name that combines the mark BMW with a geographic term with an authorized BMW dealer. Furthermore, the Respondent's site is very clear with respect to the nature of its business, so, prima facie, it would appear to this Panel that confusion is unlikely. __________________ John Berryhill Ph.d., esq. John-AT-johnberryhill.com Please do not send private messages via dnforum.com, email me directly.

01-27-2003, 10:44 PM	#9 (permalink)
jberryhill Philadelphia Lawyer Last Online: 09-18-2009 01:17 AM iTrader: (1) Join Date: Oct 2002 Posts: 2,987 DNF$: 6,350	What is interesting about those two is to look for decisions where Cabell and Johnson were on a panel together. In those situations, it appears that Cabell decides to sit on her hands. __________________ John Berryhill Ph.d., esq. John-AT-johnberryhill.com Please do not send private messages via dnforum.com, email me directly.

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01-25-2003, 03:10 PM	#2 (permalink)
Banned: CoolHost.com Account Terminated Last Online: 05-20-2003 10:22 PM iTrader: (1) Join Date: Oct 2002 Posts: 3,898 DNF$: 1,002 Location: Northeast	Thank you for taking my advice and posting this domain ... and your inquiry here in the "Legal issues" section! You'll be happy you did, once you begin to receive some input from the membership, and our esteemed legal 'friends. Good move. Good Luck.

01-26-2003, 12:04 AM	#4 (permalink)
adill420 DNF Regular Last Online: 08-09-2009 03:55 AM iTrader: (15) Join Date: Dec 2002 Posts: 512 DNF$: 1,057	CoolHost: Thanks for the advice. I thought that if you don't use a TM domain for commercial purpose there should be no problem? The only reason I registered BMWRacing.com was because I had plans on developing a forum (regardless of how many forums are out there). Kindly let me know. Thanks

01-26-2003, 09:11 AM	#5 (permalink)
pljones Gold Lifetime Member Last Online: 02-11-2004 01:21 PM iTrader: (0) Join Date: Nov 2002 Posts: 170 DNF$: 242	Read: http://arbiter.wipo.int/domains/deci...2000-1172.html and http://arbiter.wipo.int/domains/deci...2000-1688.html and http://arbiter.wipo.int/domains/deci...2001-1350.html

01-26-2003, 12:00 PM	#6 (permalink)
dtobias Gold Lifetime Member Last Online: 06-13-2009 03:36 PM iTrader: (0) Join Date: Sep 2002 Posts: 590 DNF$: 105 Location: Boca Raton, FL	If you're intending a noncommercial forum use, then perhaps .org or .info would be more appropriate (and easier to defend) than .com?

01-27-2003, 03:23 PM	#8 (permalink)
pljones Gold Lifetime Member Last Online: 02-11-2004 01:21 PM iTrader: (0) Join Date: Nov 2002 Posts: 170 DNF$: 242	That decision illustrates that the outcome in a UDRP proceeding may change depending on the Panelist assigned to the case. For example, cases w/Diane Cabell frequently turn out differently than cases deciced by Carolyn Marks Johnson. I think this case might have been different with another panelist, so don't take too much comfort in the fact that BMW lost this one.

01-28-2003, 01:53 PM	#10 (permalink)
Drewbert Registered User - Must Upgrade To Post Last Online: 06-17-2003 09:02 PM iTrader: (0) Join Date: May 2002 Posts: 467 DNF$: 986 Location: Mexico	>cases deciced by Carolyn Marks Johnson. AVOID HER LIKE THE PLAGUE is a saying that springs to mind.

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