Legal issue re: TM/copyright variant -

[IDEAS4]

My question, the "complainant" owns a dom: "xxxyyy.com" - the name I'm considering buying, which generates a few hundred visitors a month is "xxxyyynow.com" - the xxxyyy are 2 very common words, not a made up trademarked set of letters.

According to the current owner of xxxyyynow.com, they were threatened with a lawsuit by xxxyyy.com if they used it.

I'm not sure the xxxyyy.com name is that protectable, but can they stop a derivative from being a traffic generator as long as it's not being used as a parked page?

I'd like to use that xxxyyynow.com to generate traffic to a website of a similar business, by redirecting the name to one of my sites. Since I am not using the name specifically, is that safe to do?

A

 

[DNQuest.com]

What you don't mention is if xxx yyy is a name of a business or product which has gained secondary meaning in a certain category. Windows is a "common word", try selling software on windowsnow.com.

Now, from what you are describing, if they do have a common law TM on the name, your intent would be illegal.

 

[Creature]

My question, the "complainant" owns a dom: "xxxyyy.com" - the name I'm considering buying, which generates a few hundred visitors a month is "xxxyyynow.com" - the xxxyyy are 2 very common words, not a made up trademarked set of letters.

Probably depends on the territory involved. You may be ok if you're using the name in a country where no other company with a similar name is trading in similar goods/service. However, as it's a global .com I think there's some legal jargon you have to put on your site to limit your territory to wherever you are clear to trade.

 

[IDEAS4]

let's call it a jobs website for a narrow niche in the USA. I'd be using it for traffic for a jobs website with a broader, more non-specific niche but still jobs related. Their 2 words, similar to "landscapingjobs.com and the one I'd like to buy is landscapingjobsnow.com -

 

[rajeevabc]

If the name is so generic, I feel you are quite safe. Just go ahead and buy it. Although I don't know the rules in your country, its simple logic.

 

[DNQuest.com]

its simple logic.

Obviously doesn't read some UDRPs decisions :lol:

 

[Creature]

let's call it a jobs website for a narrow niche in the USA. I'd be using it for traffic for a jobs website with a broader, more non-specific niche but still jobs related. Their 2 words, similar to "landscapingjobs.com and the one I'd like to buy is landscapingjobsnow.com -

I think you're on safer ground if the words are used in the literal sense. ie, as far as I know, anyone can use the word 'knives' to trade in knives, or 'apples' to trade in apples. Sounds like somebody owns hotels.com and you want to buy hotelsnow.com, seems ok on the surface. Check with a lawyer to make sure.

 

[IDEAS4]

Thank you all - I am going ahead and buying it - I'll let you know what happens.

Art

 

[Brett Lewis]

Am I too late to weigh in? There is a common misperception that descriptive or dictionary words cannot attain trademark protection. There are several red flags here. FIrst, there is a party who you are already calling the "Complainant" that has objected to certain use of their alleged trademark by sending a demand letter. You expressed an intent to use the domain name in question to redirect traffic to a job site. The putative trademark holder operates a job site. For infringement purposes, and bad faith under the ACPA, you have both notice of the trademark holder and an intent to profit off of the domain name by using it in the same field.

It is possible, depending on what the terms at issue are and how extensive use has been made, that the complaining party may lack trademark rights, but plunging ahead with the purchase and use that you proposed sounds like an invitation for trouble.