trademark and domain name question.

AMG_POWER · 10-11-2011, 05:27 PM

lets say, I have an idea and want to register a domain but it will contain a short name of university, like yorku or uoft do you think i will get i trouble?

**T.Dot_E30** · 10-11-2011, 05:30 PM

no, you can buy any domain as long as it is not already taken.

Back in the dot com era, people used to buy popular domain names that big companies hadn't taken yet in hopes to one day sell them for alot of money. ie, sex.com sold for $12 million.

BigD · 10-11-2011, 06:58 PM

If it's part, it's questionable. As long as the whole domain can't be claimed to pertain to a trademark, you might get away with it. For instance, just because sony.com isn't registered, it doesn't give you the right to register sony.com and extort them. There is precedent (specifically for ".com"mercial domains for companies whose names/trademarks existed before teh interwebs). The domain will be turned over to Sony and you will be refunded your registration fee.

But all that assumes that the company in question actually cares. It's all yours until they complain - don't give them a reason.

Blackedout95 · 10-11-2011, 07:30 PM

Quote:

Originally Posted by T.Dot_E30

no, you can buy any domain as long as it is not already taken.

The above is the worst advice I have heard regarding domains in years. Just because it has not been registered yet does not make it ok or non infringing once reg'd.

This is my field and while you can register something if it is not yet taken it still can be infringing. Having a school name within a domain as mentioned combined with use may very well be acceptable or at least defendable.

However if you use it to place ads for other schools, that school and merchandise etc, you are likely to raise eyebrows.

Long and short of it is it will come down to use and the school even caring. Most schools do not defend much against infringment, but DELL MS Apple Disney etc would send a nice cease and desist in short order once they discovered it.

If your plan is a domain and content like Mylifeforfouryearsatuoft.ca you are fairly safe. Worst case senario they send a c&d and you take it down and transfer ownership.

I happen to be friends with the BEST domain attorney in Toronto ( the country for that matter ).
Have been in this industry many years.

BigD · 10-11-2011, 07:43 PM

Quote:

Originally Posted by Blackedout95

The above is the worst advice I have heard regarding domains in years, absolute stupidity.

Calm down and put your cock away, no need to be such a shit about it. What you quoted is 100% true - if the domain is not taken, anyone can register it. Whether or not you will keep it is a different matter. One which you could have addressed with a lot more class.

Blackedout95 · 10-11-2011, 08:05 PM

Quote:

Originally Posted by BigD

Calm down and put your cock away, no need to be such a shit about it. What you quoted is 100% true - if the domain is not taken, anyone can register it. Whether or not you will keep it is a different matter. One which you could have addressed with a lot more class.

And you telling me to calm down and not be a dick isn't you swinging your cock

When bad advice is given to the point it can result in a legal matter I will adjust my "tone" any way I see fit to save someone from following that bad advice. I appreciate you agree with my reply overall though.

Speaking of it becoming a legal matter, while a lawsuit can be a result it is highly unlikely and 99.XXX% of the time it is simply a C&D matter. It is however better to be safe than sorry because while damages and what not are hard to prove and hard to get awarded the defence fund still can run thousands.

I removed the "absolute stupidity" portion of my post, perhaps it was simply ignorance.

AMG_POWER · 10-11-2011, 08:34 PM

ok thanks guys!

**T.Dot_E30** · 10-11-2011, 09:24 PM

Ok trademark lawyer I stand corrected. You can still buy the domain but may have to hand it over if someone has a trademark case against it. But websites like http://www.walmart-blows.com/ and others still exist.

Either way it took bestbuy several years to get bestbuy.ca , I'm sure there was some sort of settlement because the company that was using it had been around before best buy existed.

Blackedout95 · 10-11-2011, 09:34 PM

True, like I said, it comes down to the TM holders desire tomake a case and your use. A tribunal such as WIPO or UDRP only costs the complaintant $1500-$2k. Your defence will likely involve a lawyer and cost more if you cannot reply yourself ( which is not recommended ).

It may be walmart-blows is best not made into a large case, increase traffic and make walmart look bad, who knows why they let it slide.

Bestbuy is unique... Target is another one recent brought up and imo the owner can defend and win or lead to a sale.

Heck there are cases where the owner clearly infringed yet beat the complaint and where a guy got a very valuable name taken over complete BS.

**SickFinga** · 10-11-2011, 09:37 PM

BigD is absolutely right. In fact there is a law again cybersquatting in the US.
http://en.wikipedia.org/wiki/Anticyb...Protection_Act

There is a reason why bmwm5.com is now m5board.com, bmwmpower.net became dtmpower.net and it is maxbimmer.com and not maxbmw.com.

Also even if you are in the right, they can still sue you for years, check out www.nissan.com

**SickFinga** · 10-11-2011, 09:45 PM

Quote:

Originally Posted by T.Dot_E30

Ok trademark lawyer I stand corrected. You can still buy the domain but may have to hand it over if someone has a trademark case against it. But websites like http://www.walmart-blows.com/ and others still exist.

Those are called gripe sites and they are protected under fair use clause. Those sites are protected as long as they are not commercial. Once you put a banner on it or start selling something trademark holder can take it away from you.

Blackedout95 · 10-11-2011, 10:47 PM

Quote:

Originally Posted by SickFinga

Those are called gripe sites and they are protected under fair use clause. Those sites are protected as long as they are not commercial. Once you put a banner on it or start selling something trademark holder can take it away from you.

That is one reason, yes. Not all gripe sites are protected and not all will not be lost, the process is quite wild as decision makers are half nuts and tend to side wth the complaintant. You can always start a legal process to block the transfer and fight the decision but again, it is expensive.

There are cases where gripe type domains are bought by the company as a form of protection.

For example, max could buy maxbimmersucks.com etc.