.CO vs .COM UDRP Question

[bankswilson]

Looking for some advice. For the purpose of this thread I will use "[genericterm]" as a variable. The variable could be replaced with videogames, baseballcards or comicbooks - you get the idea.

I am considering buying [genericterm].co


I plan to build an ecommerce store at [genericterm].co and sell [genericterm].


There is an existing [genericterm].com website that already sells [genericterm] and has been in business for many years.


This company has in the past held the USPTO Word Mark for "[genericterm].com" but not for "[genericterm]". The "Goods & Services" part of the trademark said the company sells [genericterm] and other related items. While the company is still in business the trademark is currently in a "DEAD" status and has an abandonment date of July 2011. It appears they just forgot to respond to office action letter the USPTO sent out. I do not think they intended to abandon the trademark.


If I was to proceed with my plan to buy [genericterm].co and sell [genericterm], do you think I would be a risk of losing the domain in a UDRP decision to [genericterm].com?


I am not purchasing the domain in bad-faith against [genericterm].com other than the fact that I want to sell the same type of [genericterm] products they sell.

 

[Cartoonz]

DEAD means... well, dead.
as in not in existence.

 

[WhoDatDog]

If it is truly a generic term then you are in the right, but that doesn't mean that 1) you aren't doing this in bad faith, or 2) you can't lose it in a dispute. If it is a generic term in the order of something like APPLE, where the name is generic, but it has trademarks for something else, then if you use a similar name for a similar product you would almost certainly lose whatever type of suit/UDRP was brought.

There are lots of things that fall into the grey area in domains. One of them is when someone states that they are acting in good faith on names where they are trying to benefit from another's trademark. What they are usually saying is that they don't think it can be PROVEN that they are acting in bad faith. I am not judging you, as I have done this in the past with hundreds upon hundreds of personal names of various types of celebs, poker players, athletes, etc. I will occasionally buy a personal name now, as well, though I currently have just four of them, including my own.

Whatever you do, make sure you think things through, just as you are doing now. There is a chance that you could skate all the way through and never encounter a problem, but the the bigger your business becomes the more potential risk you will bring upon yourself, depending on your level of infringement, if any.

If you feel like you have something to lose, make sure you set it up so that the Whois doesn't point directly to you if you get on the wrong side of luck/fate/fortune. If a big problem develops you will want to be able to call it a day, while protecting yourself. Some holders of trademarks are interested in just putting a stop to the infringement, while others might be inclined to punish you in order to send a message to others.

That's what life is all about. Making your best judgement and maneuvering through as best you can (and as honorably as possible).