Trademark infringement for trademark used in domain-name, different product services!

[dontmakemethink]

I bought a domain name consisting of a messaging app name, and the generic word "groups" (.com). Example: telegramgroups.com

I soon started hosting a simple forum on it, for people to exchange their contacts for that messaging app with other people.

I put a couple of Google Ads on the forum, not related to any messaging apps at all.

Being a bit naive on legal matters (don't laugh please), I contacted the messaging app, asking if it was ok if I used their name in a Google Ad-Words Campaign to advertise my website on Google. Shortly after that, I received an short email from the them, telling me that I was not allowed, and that I should also immediately stop using the domain name too, because it's representing a trademark infringement.

I am from Europe.
Their company is from US.

What's your view on that?

Thanks

 

[dontmakemethink]

I'll add that after some research I found that possible relevant laws are:

First Amendment, which allows a person to use another entity's trademark in a website domain name for purposes of commentary and parody. Meaning also the use of it in a descriptive way. Example: mercedesforum.com

and Trademark legislation which is all about the likelihood of consumer confusion in regards to the fact that the website would try to appear as one original source for products or services (or very similar products) offered by the trademark.

In my case the forum does not trick users anyway whatsoever into thinking that it's a place for downloading or receiving support for the messaging app and the potential plaintiff is not offering such services (an official, exclusive place to exchange messaging contacts for their own platform), an even if they would, I question, would they be entitled to require that no one else could provide such a space, using a domain name that includes their trademark in a descriptive way? (again First Amendment)

Thanks.

 

[Zigner]

I bought a domain name consisting of a messaging app name, and the generic word "groups" (.com). Example: telegramgroups.com

I soon started hosting a simple forum on it, for people to exchange their contacts for that messaging app with other people.

I put a couple of Google Ads on the forum, not related to any messaging apps at all.

Being a bit naive on legal matters (don't laugh please), I contacted the messaging app, asking if it was ok if I used their name in a Google Ad-Words Campaign to advertise my website on Google. Shortly after that, I received an short email from the them, telling me that I was not allowed, and that I should also immediately stop using the domain name too, because it's representing a trademark infringement.

I am from Europe.
Their company is from US.

What's your view on that?

Thanks

I'm sorry, but we only handle US law matters. You will want to consult with local (to you) legal counsel.

Best of luck to you.

 

[Zigner]

I'll add that after some research I found that possible relevant laws are:

First Amendment, which allows a person to use another entity's trademark in a website domain name for purposes of commentary and parody. Meaning also the use of it in a descriptive way. Example: mercedesforum.com

and Trademark legislation which is all about the likelihood of consumer confusion in regards to the fact that the website would try to appear as one original source for products or services (or very similar products) offered by the trademark.

In my case the forum does not trick users anyway whatsoever into thinking that it's a place for downloading or receiving support for the messaging app and the potential plaintiff is not offering such services (an official, exclusive place to exchange messaging contacts for their own platform), an even if they would, I question, would they be entitled to require that no one else could provide such a space, using a domain name that includes their trademark in a descriptive way? (again First Amendment)

Thanks.

The First Amendment to the US Constitution has no bearing on this matter. This is something that you will have to deal with in YOUR country.

 

[dontmakemethink]

I'm sorry, but we only handle US law matters. You will want to consult with local (to you) legal counsel.

The First Amendment to the US Constitution has no bearing on this matter. This is something that you will have to deal with in YOUR country.

The company is a U.S. based company and my website and domain registrar are based in Canada.
Being it a U.S. based company, isn't U.S. law that applies?

Thanks

 

[justalayman]

For certain issues involving this, yes and for others it would be Canada or your home country. Of course you also have ICANN to deal with as well and given your statements I suspect you would lose in any venue, unless you live in a country that doesn't bother respecting other countries laws through the various international agreements.

 

[quincy]

I bought a domain name consisting of a messaging app name, and the generic word "groups" (.com). Example: telegramgroups.com

I soon started hosting a simple forum on it, for people to exchange their contacts for that messaging app with other people.

I put a couple of Google Ads on the forum, not related to any messaging apps at all.

Being a bit naive on legal matters (don't laugh please), I contacted the messaging app, asking if it was ok if I used their name in a Google Ad-Words Campaign to advertise my website on Google. Shortly after that, I received an short email from the them, telling me that I was not allowed, and that I should also immediately stop using the domain name too, because it's representing a trademark infringement.

I am from Europe.
Their company is from US.

What's your view on that?

Thanks

Based on what you have written, I see more than one problem with your use of a (famous) trademark in your domain name - this whether you are located in the UK, Canada, or the US. You could potentially be sued in any one of these countries, although the trademark holder is most likely to sue you in your own area of residence under your own country's laws.

There is not only trademark infringement to consider, there is also dilution of a famous mark, disparagement of the mark, and unfair business practices.

Using another's trademark to advertise your site is a good way to lose your domain name. You are not allowed to profit off the name and reputation of another company, its products or its services.

The First Amendment can allow for the use of another's trademark for purposes of comment or criticism, for descriptive purposes, and for parodies of a mark, but even these can be argued in a courtroom when the trademark holder questions the use and sues. In other words, the right to free expression has limits - in our country and in your country.