trademark question

[Zheka]

What is the name of your state (only U.S. law)? California
Am I in trouble if I took domain kind of "trade.mark"? like merced.es or yah.oo as an example.

 

[quincy]

What is the name of your state (only U.S. law)? California
Am I in trouble if I took domain kind of "trade.mark"? like merced.es or yah.oo as an example.

Are you in trouble if you use a registered trademark as part of your domain name? Possibly. Possibly not.

Whether a dispute arises over your domain name can depend on several factors, including the reason for your purchase of the name containing someone else's trademark, any consumer confusion generated by your use of the domain name containing the trademark, the litigiousness of the trademark holder ...

You could have the particulars of your intended use reviewed by an attorney in your area, to give you a better idea of what sort of risks you might face.

 

[Zheka]

May I resell such a domain name?

 

[quincy]

May I resell such a domain name?

Was your purpose in purchasing a domain name like merced.es or yah.oo to sell it to Mercedes or Yahoo? If so, you will be looked at as a cybersquatter - and you really don't want to be looked at as a cybersquatter.

Under the Anticybersquatting Consumer Protection Act, the holder of a trademark can sue the cybersquatter or can use the ICANN arbitration system to take control of the domain name.

See the Lanham Act, 15 USC §1125(d): http://www.law.cornell.edu/uscode/text/15/1125

Messing around with the registered trademarks of others is not a good idea.

 

[Zheka]

No I am not a cybersquatter. If I were a cybersquatter probably I would knew answers on these questions. I just want to make a webstore and was choosing the name and just stumble upon that words. So I took it without even checking info about that name because that words are pretty popular in IT. I did not know that it is a trade mark. It's pretty famous words like "power button", "keyboard', "cut and paste", ets. I do not want to get in trouble but I also do not want to loose that name for nothing.

 

[quincy]

No I am not a cybersquatter. I just wanted to make a webstore and was choosing the name and just stumble upon that name. So I took it without even checking info about that name because that words are pretty popular in IT. I did not know that it is a trade mark. It's pretty famous words like "power button", "keyboard', ets. I do not want to get in trouble but I also do not want to loose that name for nothing.

If it is a famous trademark, then the chances of you being able to use it for your web store without a legal challenge are probably pretty slim. If it is a mark that uses common words, the likelihood of your domain name leading to legal problems for you could be less. It really depends on the facts.

There are a few ways to lose a domain name. The most common way to lose a domain name is through a failure on the part of the domain name holder to pay the annual domain name fee. But other ways to lose a domain name involve holders of trademarks, who notice the unauthorized use of their marks in a domain name and object to its use. This is what you need to be concerned about.

If the domain name works to confuse consumers, who use the domain name thinking the trademark holder has some sort of connection to domain owner's site (e.g., believing the trademark holder operates it, endorses it, supports it), then the trademark holder can sue the domain name owner for trademark infringement. There is consumer confusion, which is what trademark law centers on.

If the domain name "dilutes" the value of a famous trademark, perhaps by directing traffic to a website of questionable character, the trademark holder can sue the domain name owner for tarnishment. The reputation of the trademark is harmed by the use of it in the domain name.

And, if the domain name owner has never used the domain name for a legitimate purpose but is found instead to have purchased the name in bad faith (e.g., with hopes to make money by selling it to the trademark holder at an inflated price), the domain name owner is a cybersquatter and the domain name can be wrested away from the domain name owner and turned over to the trademark holder.

But there are also a few ways a domain name that has another's trademark in its name can be used legally, though, too. There are many different companies that have the same or similar names under which they do business. For example, there are several ABCs, a couple of Apples, numerous Enterprises that all peacefully coexist in the marketplace. If the businesses do not compete (by marketing the same or similar goods or services). When this is the case, then there might not be a problem, either using the name as part of a domain name or as a trademark.

Without knowing the real trademark involved in your situation, however, I am unable to tell you how risky your use of the name for your website will be. Everything depends on the particulars and, unfortunately, we are not able on this forum to provide posters with personal reviews of the particulars. You will need to seek out the help of an attorney in your area. The attorney you see can investigate the real name involved and let you know better what your legal risks are, if you want to keep the domain name you purchased and use it to identify your website.

Good luck.