DOMAIN USE

[caketime99]

What is the name of your state? new york

Hello. If I own the 'service mark - principal register' "anthony's treats", can someone create a website with the domain/ url address "anthonystreats.com" (or any other .com, .net, etc type ending) - EVEN IF they do not have the title 'anthonys treats' anywhere on their website, rather, it is only their domain address? Or would buying/ creating a domain address with my service mark be 'service mark' infringement?

Thank you.

 

[quincy]

What is the name of your state? new york

Hello. If I own the 'service mark - principal register' "anthony's treats", can someone create a website with the domain/ url address "anthonystreats.com" (or any other .com, .net, etc type ending) - EVEN IF they do not have the title 'anthonys treats' anywhere on their website, rather, it is only their domain address? Or would buying/ creating a domain address with my service mark be 'service mark' infringement?

Thank you.

If the domain name containing your trademark has led to, or is likely to lead to, consumer confusion, it infringes on your rights. You potentially could wrest ownership of the domain name from its current user.

 

[caketime99]

Thank you. I am aware of how a potential trademark (from someone else), similar in title to my TM could be denied a trademark of its own, because the titles are too similar and the potential TM from someone else could lead to 'consumer confusion'. I've attended some trademark seminars put on by the uspto, though I am no expert.

But I'm wondering if this isn't more straightforward, black and white, yes you can, no you can't.

I own the TM "anthonys treats", registered TM. Previously, I had been told by domain registrars (places you buy a domain / url address) that if you own a TM on a title, that, yes, someone else can buy a domain using that EXACT TM title, but they are not legally allowed to use it as the address for a LIVE website. Let's assume that what they would be using it for would fall into the same "class" (ie: class 41) as the class my TM/SM is registered under.

Thank you.

 

[caketime99]

... thank you Quincy for your reply. I'm happy to hear anything else you have to say about it. The reason I reworded my question a bit is because you mentioned "potentially" and I am wondering if it is more black and white than potentially. It seems 'potentially' could be applied to everything. Thank you.

 

[quincy]

There are no trademark rights gained with the registration of a domain name. Anyone can register any name that is available to register, even if the name is the same as or similar to someone's trademark, or contains the same or similar trademark in its name.

Problems arise for a domain name registrant if domain names with others trademarks were registered in bad faith (e.g., with the intent of selling the domain names to the trademark holders at an inflated price). There is now an Anticybersquatting Protection Act that has cut down on cyber squatting and typo squatting (where a trademark is used in a domain name but with slight misspelling). It is easier now for a trademark holder to gain control of a bad-faith registrant's domain name.

Specific facts always matter in law. There is no real "yes, this is okay" or "no, this is not okay" rule to follow other than common sense. It is common sense that the holder of a famous trademark (e.g., Coca-Cola, Nike) will not look favorably on your use of their famous mark. You can expect them to notice your use and have their attorneys respond to your use. It is common sense that this is not something you want.

 

[caketime99]

Thanks Quincy!

Coca-cola is a great example. I was figuring that if I buy the domain name "coca-cola.info", for example, and then put a live website up, (even without putting the term coca-cola on my website, just using it in the domain name/ domain address) that I am, without question, infringing upon coca-cola's TM (even if I am just using the TM name in my domain name to say negative things about why coca-cola is unhealthy for people, etc).

It just seems somewhat shocking to me that even just "potentially", that could be legal and not infringement upon coca-cola's TM. Like I said, I am anything but an expert when it comes to TM law.

Thanks again.

 

[quincy]

Thanks Quincy!

Oh. You added to your post after my earlier response. I have now added to mine to address your additions.

There are some uses of trademarks that are legally okay.

You can use trademarks for descriptive purposes. For example, you can say someone is drinking a Coke. That does not infringe on Coke's trademark rights. You can also comment on or critique a product using the product's trademark. For example, you can say soda drinkers in one study prefer Coke over Pepsi (if true). And you can use a famous trademark in a domain name that directs to your website if your use of the trademark does not cause consumer confusion, imply a sponsorship or endorsement or affiliation with the trademark holder where none exists, or if it does not dilute the value of the mark. For example, you could have a "Pepsi sucks" domain name and no consumer confusion should be generated because the average consumer knows that Pepsi is unlikely to be affiliated with such a site. Comments made about Pepsi (if not defamatory) could be protected speech.

With all of that said, any unauthorized use of another's trademark brings with it some legal risk. It can be the wise person who does not use another's mark without permission from the trademark holder or, at the very least, a personal review by an IP professional.

I appreciate the thanks, caketime99.

Good luck.

 

[adjusterjack]

Coca-cola is a great example. I was figuring that if I buy the domain name "coca-cola.info", for example, and then put a live website up, (even without putting the term coca-cola on my website, just using it in the domain name/ domain address) that I am, without question, infringing upon coca-cola's TM (even if I am just using the TM name in my domain name to say negative things about why coca-cola is unhealthy for people, etc).

You would likely be sued back into the stone age.

If I own the 'service mark - principal register' "anthony's treats",

The trouble with using a common name like that is that anybody named Anthony who sells treats (or intends to) may have a solid claim to the domain name in spite of your business.

Consult an attorney before you start playing games with this stuff.

 

[quincy]

You would likely be sued back into the stone age.

The trouble with using a common name like that is that anybody named Anthony who sells treats (or intends to) may have a solid claim to the domain name in spite of your business.

Consult an attorney before you start playing games with this stuff.

Coca-Cola would be less likely to sue and more likely to send a letter that threatens a lawsuit if certain demands are not met (with one demand being to stop using their trademark).

 

[caketime99]

You would likely be sued back into the stone age.



The trouble with using a common name like that is that anybody named Anthony who sells treats (or intends to) may have a solid claim to the domain name in spite of your business.

Consult an attorney before you start playing games with this stuff.

Thank you, Jack!

 

[caketime99]

Coca-Cola would be less likely to sue and more likely to send a letter that threatens a lawsuit if certain demands are not met (with one demand being to stop using their trademark).

Thanks Quincy!

 

[quincy]

Thanks Quincy!

You're welcome, caketime99. Both adjusterjack and I appreciate the thanks.

As an additional note on trademark infringement lawsuits:

Where there is no actual demonstrable harm to a trademark holder (e.g., no profits made by the infringer, no losses suffered by the trademark holder, no clear cut deliberate infringement, no counterfeiting), the trademark holder will (generally) not be awarded any monetary damages but can seek and obtain in court an injunction to stop an infringer's use of the trademark. But a trademark holder can often get an infringer to stop using the trademark, and gain control of a domain name, simply with a letter to the infringer alone - saving everyone the costs of a legal action.

 

[STEPHAN]

Was the domain registered before or after the trademark was registered?

 

[quincy]

Was the domain registered before or after the trademark was registered?

I don't think any domain name has been registered yet.

Even if a domain name were registered with a name that is only later used as a trademark, the law remains the same.

Trademark rights are gained through the use of the mark in commerce. There are no trademark rights in a domain name on its own.

 

[STEPHAN]

The original question was: can someone create a website with the domain/ url address "anthonystreats.com"

If the domain existed before, he for sure can use the domain in other areas and OP has no rights to the domain.