If I have trademarked names in the domain name...

[karmicwaves]

Say I have a domain name ChoosingSmartMensJewlery dot whatever. And Choosing Smart happens to be a trademarked name for a company called Choosing Smart that makes vitamins. Would the company come after me?

 

[quincy]

Say I have a domain name ChoosingSmartMensJewlery dot whatever. And Choosing Smart happens to be a trademarked name for a company called Choosing Smart that makes vitamins. Would the company come after me?

What is the name of your state or, if not in the US, what is the name of your country?

 

[quincy]

First, trademark laws vary by country. What is true of trademarks in the US under US trademark laws might not be true of trademarks elsewhere.

What follows is based on US law.

Domain names that have as a part of them a registered trademark might not infringe on any trademark rights if consumers are not confused by the domain name into thinking there is a connection to the trademark holder and the trademark holder cannot show damage as a result of the use.

In your example, it is unlikely that a trademark holder could prevent your use of the domain name. But this could change with a different example - for instance, if "ChoosingSmart" was replaced with a famous mark like Disney or Coca-Cola. Disney or Coca-Cola could have a legitimate claim to pursue.

That said, nothing prevents a company from asserting rights and seeking legal recourse. A trademark holder is responsible for protecting their mark from the unauthorized uses by others. This can mean that a trademark holder may claim more rights than they actually have just to prevent infringement.

The NFL and Disney, for example, are two that vigorously protect all rights by sending cease and desist letters with some frequency, whether their claims of infringement have merit or not. Because of the size of the companies and their legal teams, smaller companies may be intimidated into ceasing their use of their mark rather than face the expense of a court action.

 

[karmicwaves]

Thank you, that was very informative. I'm in Canada but for this type of things it wouldn't matter - I think - because the domain name will be registered with an American company. I think it matters where the server holding that domain name is situated, I may be wrong too. And you're right, nothing really prevents them from initiating legal proceedings if they think their trademark is somehow being infringed upon.

 

[quincy]

The country actually matters.

If a trademark is not a famous mark (recognized by consumers worldwide as identifying specific goods or services), a company in one country can use the same mark (and register the same mark) if not already registered and used in that country already by the original trademark holder. And even the holders of famous marks can have their rights to the mark challenged in other countries by a second user. "Famous" can be relative.

Domain names, as a note, do not on their own provide the domain name holder with trademark rights. A trademark must be used to identify goods or services.

Also, domain names often have the top level domain identity the country.

There are many factors that would be considered if a use of a domain name is challenged by the holder of a trademark. But there are many domain names that are similar and cause no trademark issues.

If you have a concern, you can review the specifics with an IP attorney in Canada. If you are sued, it will be in Canada under Canada's trademark laws.

 

[Taxing Matters]

If you are sued, it will be in Canada under Canada's trademark laws.

I agree with quincy, with the caveat that if you actually use that domain name to transact any business in the U.S. then U.S. law would apply and you may be sued in the U.S. for that.

 

[quincy]

Jurisdiction could be argued (and probably would be).

 

[karmicwaves]

Thank you @quincy and @TaxingMatters! I was going to register a domain and sell merchandise. So it would probably be best to avoid any trademarked names and choose a different wording.

 

[quincy]

Avoiding any known potential problem is always the smartest way to operate. You don't want to launch your new business with a lawsuit filed against you.

We appreciate the thanks so thank you.

Good luck.

 

[Loveisi]

I agree with quincy, with the caveat that if you actually use that domain name to transact any business in the U.S. then U.S. law would apply and you may be sued in the U.S. for that.

Yes. However if your site was www.mysite.com/ChoosingSmartproducts or something along those lines, that would work. Your main domain name. shouldn't be trademarked but you can have a sub-section for sure.

 

[quincy]

Yes. However if your site was www.mysite.com/ChoosingSmartproducts or something along those lines, that would work. Your main domain name shouldn't be trademarked but you can have a sub-section for sure.

No. It is not necessarily "for sure" that using someone else's trademark in that manner avoids infringement.

Karmicwaves is smart to consider a name that is not in use already.

 

[Loveisi]

How would you explain the following results (Hundreds of them)?

 

[quincy]

How would you explain the following results (Hundreds of them)?]

I would explain those examples as descriptive uses of the trademark Rolex, and descriptive uses can be a fair and legal use of a trademark.

You cannot sell a Rolex without calling it a Rolex or a Ford Mustang without calling it a Ford Mustang.

However, if you are NOT selling a Rolex (and karmicwaves was not selling ChooseSmart vitamins), you cannot use the Rolex trademark (or ChooseSmart) without risking an infringement action.

You cannot use someone else's trademark as a way to attract attention to your own product or service. You cannot use the Rolex trademark to sell your own brand of watches. If you have no affiliation with, sponsorship by or endorsement from a trademark holder, you cannot use their trademark as your own trademark, in whole or in part, without legal risk.

This applies in Vancouver, where you live, as well as in the U.S.

Also, although I can understand why you posted the links, the links you posted can be considered commercial messages - and commercial messages are prohibited on this site.

 

[Loveisi]

@quincy - Thanks for clarifying. Wow you seem to know a lot about this subject. Thanks for sharing. Yeah it's always best to avoid brand names in the first place. Lawyers are expensive and the court process takes a LONG time. Not worth it.