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domain names vs. trade mark names?

by manhal
16 replies
We all know that trademarks (TM's) names are belong to their own companies and no one can use it. Now is this apply to the domain names as well ?!!!

I was always under the impression that you can take ANY domain name you like as long as it is currently not taken, however a friend of mine who is a lawyer mentioned that a trademark domain can not be taken even if it is available?!!! as it can only be taken by the TM owner ?!!

To make this clear, here is an example, for instance say microsoft.iq is available (iq stands for IRAQ) and I am the first one who register it, is it true that latter microsoft company can take the domain from me by force of the law just because microsoft is a TM name?!! if so then how do I know whether a domain is TM name ?
#domain #mark #names #trade
  • Profile picture of the author Gene Pimentel
    You cannot use a Trademarked term ANYWHERE without permission, including domain names.

    "I was always under the impression that you can take ANY domain name you like as long as it is currently not taken"

    Not true at all. Read this to understand:
    FAQ about Domain Names and Trademarks -- Chilling Effects Clearinghouse

    and this:
    http://smallbusiness.findlaw.com/tra...trademark.html


    .
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  • Profile picture of the author manhal
    Thank you GenePimentel; in one of the links above I looked at the answer of this question;

    How was I supposed to know that my domain name violates somebody else?

    but still it is not clear to me ...
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    • Profile picture of the author TrafficMystic
      Originally Posted by manhal View Post

      Thank you GenePimentel; in one of the links above I looked at the answer of this question;

      How was I supposed to know that my domain name violates somebody else?

      but still it is not clear to me ...
      You need to check otherwise you will find out through a lawyer dealing in media law.. This happened to me... and it's the biggest pain in the butt you can imagine.. and really not worth the hastle..
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  • Profile picture of the author sbucciarel
    Banned
    You can always do a trademark search in TESS
    http://tess2.uspto.gov/

    before registering, but it's pretty simple ... brand names are generally trademarked and generic keywords generally cannot be. Microsoft, Google, Ebay, etc etc etc ... all are trademarked as is Nintendo, XBox, ToysRUs ... you get the picture.
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    • Profile picture of the author davezan
      Originally Posted by sbucciarel View Post

      generic keywords generally cannot be.
      To expand a bit, generic keywords cannot be used as trademarks in their so-
      called generic, common or descriptive sense. But they can become such if it's
      used in a distinctive manner.

      Shell, Tide and Head and Shoulders are generic or descriptive for the mollusk,
      the waves and a person who's considered above the rest. But they are quite
      distinctive (and commercially successful) for petroleum, detergent, and brand
      of shampoo.

      Doing a check at USPTO as sbucciarel posted is a start. You can also type in
      Google like "something trademark" or more, although there's no all-in-one kind
      of trademark search engine.

      If ever in doubt, ask a lawyer like TrafficMystic. But check with one who deals
      with intellectual property law, especially with domain names.
      Signature

      David

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  • Profile picture of the author manhal
    Are you guys doing all these checks before registering any domain name ?

    btw: apparently nissan.com used by someone in US however the name itself trademarked for the Japanese car company NISSAN; how come he is using it for computers till now!!!
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    • Profile picture of the author Gene Pimentel
      Originally Posted by manhal View Post

      btw: apparently nissan.com used by someone in US however the name itself trademarked for the Japanese car company NISSAN; how come he is using it for computers till now!!!
      This is why:

      http://www.nissan.com/Lawsuit/The_Story.php
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    • Profile picture of the author sbucciarel
      Banned
      Originally Posted by manhal View Post

      Are you guys doing all these checks before registering any domain name ?

      btw: apparently nissan.com used by someone in US however the name itself trademarked for the Japanese car company NISSAN; how come he is using it for computers till now!!!
      Did you also happen to notice that Nissan Motors has a lawsuit against Nissan Computers?
      Nissan Motor vs. Nissan Computer - Digest.com

      They don't really have a case because the computer company was in existence before Nissan Motors, but Nissan is the big gun in this case and has caused the little computer company a lot of grief and legal expenses and it looks like it's still not over. Nissan Motors is literally trying to bully the domains from the computer company.

      Now I seriously doubt that the computer company makes much money. Very cheesy little website. Didn't spend a dime to create it. I would certainly be offering Nissan Motors a chance to purchase nissan.com and nissan.net for a couple million dollars

      This would be bad advice if they were losing the infringement cases against them by Nissan Motors because it would show that the computer company registered the domains in "bad faith" to capitalize on Nissan Motors name and reputation, but since they are winning the cases brought against them, I doubt if it would hurt them.
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      • Profile picture of the author davezan
        Originally Posted by sbucciarel View Post

        I would certainly be offering Nissan Motors a chance to purchase nissan.com and nissan.net for a couple million dollars
        Nissan bumper Stickers

        So NO, we did not demand $15 million, Mr. Nissan's stand was and is, "The domain name is not for sale.
        And from the link you posted:

        The court ordered NMC to pay $58,000 as cost under rule 68, this is less then 2% of what the cost was to defend this case.
        Anyone wonder why Mr. Nissan let this case drag on, other than perhaps out
        of personal principle?
        Signature

        David

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        • Profile picture of the author WinsonYeung
          Wow, i just spend some time to check the whole document.
          Well, it's definitely a big company bullying the smaller company over here...


          Originally Posted by davezan View Post

          Nissan bumper Stickers



          And from the link you posted:



          Anyone wonder why Mr. Nissan let this case drag on, other than perhaps out
          of personal principle?
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          • Profile picture of the author davezan
            Originally Posted by WinsonYeung View Post

            Wow, i just spend some time to check the whole document.
            Well, it's definitely a big company bullying the smaller company over here...
            I used to think that way...until I took more time to read the details behind the
            case. It started out as a relatively simple dispute until Mr. Nissan did a no-no
            along the way, namely putting an online ad for...of all things...cars.

            But that's because I became interested in learning more. I suppose others are
            maybe not, which is fine as far as both Nissans are concerned.
            Signature

            David

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            • Profile picture of the author seasoned
              Originally Posted by davezan View Post

              I used to think that way...until I took more time to read the details behind the
              case. It started out as a relatively simple dispute until Mr. Nissan did a no-no
              along the way, namely putting an online ad for...of all things...cars.

              But that's because I became interested in learning more. I suppose others are
              maybe not, which is fine as far as both Nissans are concerned.
              SO WHAT!?!?!? It is HIS name! It is HIS company! Everything existed BEFORE "nissan MOTORS". It is nissans fault. WHAT, should paul mccartney sue someone in the US that was named paul that played songs in the 1950s? If you want to sue someone for a trademark infringment, GET A PROPER TRADEMARK!!!!!!

              Steve
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        • Profile picture of the author seasoned
          Originally Posted by davezan View Post

          [url=http://www.nissan.com/Digest/faq.php]Anyone wonder why Mr. Nissan let this case drag on, other than perhaps out
          of personal principle?

          There are TWO ways to read this....

          1. Why didn't they get "nissan motors" to drop the case? THEY WOULDN'T! THAT is the reason for the suit!!!!

          2. Why didn't he cheat himself, break principles and ethics, and basically BREAK THE LAW by giving the dishonest plaintiff the domain, and just give everyone all they want?

          OK, I would like a million dollars! Are you going to pay me? I KEEP making that request, and nobody has done it yet!

          Steve
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          • Profile picture of the author davezan
            Originally Posted by seasoned View Post

            OK, I would like a million dollars! Are you going to pay me? I KEEP making that request, and nobody has done it yet!
            That's the thing, Steve. Nissan Motors wanted to buy the domain name from
            Mr. Nissan back then, but...he refused.

            Considering how much he's spent in this dispute from my last post here, along
            with his trying to make whatever commercial use he can with the domain, why
            is he still fighting them to this day? He's not looking for a big payday, is he?

            And sorry, but trademark dilution laws won't allow people to use their personal
            names to make money off certain fields if someone's already done so. You can
            not use your name DuPont to sell chemicals, or Trump for maybe an ebook on
            how to make money, or Ford to open an autorepair business, etc. And Nissan
            had done business in the U.S. since 1954 or so, somewhere along that time.

            Check them out if you doubt what I say.
            Signature

            David

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  • Profile picture of the author Steve Powers
    From a long view,you'd better check it.Imagine that when your domain becomes popular
    under your hard work,then you are told that it is a registered trademark and you can't use
    it any more.That sucks.
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  • Profile picture of the author Richard Tunnah
    Trademarked domains is a complex issue were you have trademarked names in some countries and not others. Trademarks may be infringed in a number of ways. But the bottom line I'd suggest is to stay well clear of any known trademarks and to consult a trademark lawyer who can give you professional advice which I'd suggest we can't on this forum.

    Rich
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