Internet Trademark

What is the name of your state? NJ

Need an opinion if I should pursue this matter firther with legal counsel.

Here in NJ we have a transportation system called NJ Transit. They recently developed a light rail train going through South Jersey called The Riverline.

After seeing an ad in the local paper identifying a specific stop on the Riverline system with businesses advertising I came up with an idea for a website. I reserved the domain already (called link removed). My plan is to have the website up listing all stops of the Riverline system. Each stop will have sections labeled dining, shopping, and entertainment where businesses can advertise. My plan is to list the website as having nothing to do with NJ Transit.com and I even planned on providing links to the official pages of njtransit.com and riverline.com with Riverline info and stop schedules.

Out of a courtesy, I emailed NJ Transit to inform them of this venture and asked for their opinion. I received no reply so I then contacted their legal office with an email of my intentions. The original email I sent was replied to yesterday with a phone call from their Marketing Director who informed me of what a great idea it is and that they have the same intention int he future.

He informed me in the phone conversation that he cannot stop me from providing advertising space on a web site for businesses to endorse economic development but I cannot use the URL of [(url] link removed) because NJ Transit already has a trademark on the term Riverline. He said if I start up the website, I will be issued a cease and desist order from NJ Transit and ultimately be named in a law suit.

Does anyone have an opinion on this matter? A couple of things concern me....

1. I went to the patent office website and did a search, and found no trademark listed for Riverline.

2. Why did the Marketing Director contact me and not their legal counsel?

3. He informed me the main reasoning for his decision is based on the fact that they believe my website will mis-lead individuals making them think they are at an official web site rather than a private one. When I informed him I will have text on the main page stating "This page is in no way affiliated with NJ Transit", he replied back by saying "You just can't do it"

I find it hard to believe that they can prevent me from developing this website when there are still web sites out there that intentionally mis lead individuals to sites such as [(url] link removed ) which is actually a pornographic web site.

Any infromation provided would be greatly appreciated.

1. I went to the patent office website and did a search, and found no trademark listed for Riverline.

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You are confusing trademark with copyright. This is a copyright issue.

2. Why did the Marketing Director contact me and not their legal counsel?

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If you use the website address the Legal council WILL contact you.

3. He informed me the main reasoning for his decision is based on the fact that they believe my website will mis-lead individuals making them think they are at an official web site rather than a private one. When I informed him I will have text on the main page stating "This page is in no way affiliated with NJ Transit", he replied back by saying "You just can't do it"

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And of course, you asked 'him' where he is licensed to practice law.

Listen, this is probably a non-issue. HOWEVER, if you use the web address as you want you WILL be contacted by their legal council with a cease and desist order. If you don't cease using the address you will have to defend your use of the name.

Are you ready to spend $1,000's of your own money to keep the address (if you can).

Thanks for the reply. Since he said I cannot use the domain riverlinestops.com since the system is called riverline, do you anticipate any problems if I use the domain www--link removed.] (I reserved that one also)

I'm not the one you need to be asking. If you think it's worthwhile then use it. But be prepared when they want it stopped.

krispenstpeter, I must respectfully disagree. This is a trademark issue, not a copyright issue.

Even if the NJ transit authorities may not have filed for a registered trademark with the USPTO, they may still have trademark rights, either registered with the state, or common law trademark rights acquired through usage.

"He informed me the main reasoning for his decision is based on the fact that they believe my website will mis-lead individuals making them think they are at an official web site rather than a private one. When I informed him I will have text on the main page stating "This page is in no way affiliated with NJ Transit", he replied back by saying "You just can't do it""

It doesn't matter that your page says "not affiliated" on it -- the fact that the URL has the name "riverline" in it could potentially confuse consumers into thinking that it is an official site. Whether or not something could reasonably confuse a consumer as to the owenrship of a website is part and parcel of trademark law. By the time a consumer reaches your page to read the disclaimer, the "confusion" has already occurred -- that's why a confusing domain name is enough to give rise to a trademark issue.

Your best bet is to speak with a local lawyer experience in trademarks who can determine what rights, if any, NJ transit has to the name "riverline."

One more thing -- the other name, riverstops, is much less likely to fall under a confusion analysis than riverlinestops would be. Also, remember that domain name disputes are handled outside of the court system, and the burden of proof is not at high with ICANN as it would be in court...

You are probably going to learn the hard way what the term 'cybersquatting' means.

Diva, you cute thing you

Racer I trust you are not accusing me of cybersquatting. I registered the original domain of riverlinestops.com with the full intention of using it for my own use....when the Transit personnel told me I could pursue my venture provided that the word "riverline" was not in the url that is when I registered Link Removed (which was last night)

Cybersquatting means registering, selling or using a domain name with the intent of profiting from the goodwill of someone else's trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses ... something I do not intend on doing.

captainron19,

"intent of profiting from the goodwill of someone else's trademark" covers more than simply buying up a name to sell it to someone who owns the trademark -- if you use a consumer's familiarity with a trademark to drive traffic to your site, that is also using the trademark holder's "goodwill." If you do go ahead and use "riverlinestops" then you could easily be found to be cybersquatting, in addition to regular old trademark infringement. Don't yell at racer72 -- intent can in inferred in many ways...

One more thing -- if NJ Transit agrees to buy riverlinestops.com from you, don't sell it to them -- give it to them instead. Courts have ruled that selling or negotiating to sell a URL that is covered by a trademark to the trademark holder creates a prima facie case of cybersquatting -- even if it is the trademark holder that initiates the negotiations. Unfair, probably, but that's the way it is.

And, finally, even burying the name "riverline" in the meta tags of your webpage can be found to be trademark infringement -- just so you know!

BTW,

"the Transit personnel told me I could pursue my venture provided that the word "riverline" was not in the url that is when I registered riverstops.com "

I hope you got that in writing!