Trademarks and new TLDs?

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  • datingfactory.xxx
    Confirmed User
    • Feb 2012
    • 289

    #1

    Trademarks and new TLDs?

    If a domainname and one of the new TLDs together adds up to a registered trademark,
    f.ex if .chat was available and someone registers roulette they would get the domain roulette.chat!
    Would this be against any rules?
    Or is it only the part in front of the TLD that is protectable?
    Skype: medlem1

    Adult white label dating from datingfactory.
  • JosephFM
    Confirmed User
    • Feb 2010
    • 1190

    #2
    I was going to register a domain.club but the registration did not go thru because domain club together was a trademark.

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    • Barry-xlovecam
      It's 42
      • Jun 2010
      • 18083

      #3
      All new names of the New TLDs must be inspected against the Trademark Clearing House http://newgtlds.icann.org/en/about/t...-clearinghouse databases of registered trademarks -- the new registries are charged for this. Trademark names are rejected to be registered unless the registrant is the rightful trademark owner.

      Good question including the .string as a wordspace? Seems so by the above ...

      ** see > http://newgtlds.icann.org/en/about/t...ringhouse/faqs still reading
      Last edited by Barry-xlovecam; 08-22-2014, 12:05 PM.

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      • Barry-xlovecam
        It's 42
        • Jun 2010
        • 18083

        #4
        No, potential domain name registrants will not receive a claims notice when attempting to register a domain name that matches the name of a trademark recorded in the Clearinghouse during the Ongoing Notifications period. That warning notice will only be sent out during the original Trademark Claims Period. However, you as a trademark holder will be notified when the domain name is registered in a New gTLD.

        http://trademark-clearinghouse.com/h...pting-register
        A domain name is inclusive of the domain string (the .extension) by a read of this.

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        • datingfactory.xxx
          Confirmed User
          • Feb 2012
          • 289

          #5
          Ok.
          So if I was able to register "roulette.chat" without problems my domain is free to use?
          Skype: medlem1

          Adult white label dating from datingfactory.

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          • aka123
            Confirmed User
            • Jul 2014
            • 4450

            #6
            Originally posted by datingfactory.xxx
            Ok.
            So if I was able to register "roulette.chat" without problems my domain is free to use?
            Depends what you mean about "free to use"? I doubt that there would be a list of all trademarks, not to speak of "common" trademarks.

            Technically yes, but otherwise you never know, until you know.

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            • datingfactory.xxx
              Confirmed User
              • Feb 2012
              • 289

              #7
              Ok thanks.
              I guess there will be much arguing in the future now with all TLDs that are actual words and not simple combinations of two three or four letters.
              Skype: medlem1

              Adult white label dating from datingfactory.

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              • Barry-xlovecam
                It's 42
                • Jun 2010
                • 18083

                #8
                Word Mark ROULETTECHAT.COM
                Goods and Services (ABANDONED) IC 042. US 100 101. G & S: Providing a website featuring technology that enables users to communicate with each other in real time using both video and audio. FIRST USE: 20031121. FIRST USE IN COMMERCE: 20031121
                Standard Characters Claimed
                Mark Drawing Code (4) STANDARD CHARACTER MARK
                Serial Number 77968990
                Filing Date March 25, 2010
                Current Basis 1A
                **names and address omitted
                Type of Mark SERVICE MARK
                Register PRINCIPAL
                Live/Dead Indicator DEAD
                Abandonment Date December 29, 2010
                Yes, only because the trademark is dead.
                Last edited by Barry-xlovecam; 08-22-2014, 01:58 PM.

                Comment

                • Barry-xlovecam
                  It's 42
                  • Jun 2010
                  • 18083

                  #9
                  HOWEVER, what claims these people may have of your using a similar name in bad faith night have?

                  Word Mark CHATROULETTE
                  Goods and Services IC 038. US 100 101 104. G & S: Telecommunication services, namely, providing real time video communications in the nature of transmission of information through video communication systems, chat video messaging in the nature of virtual rooms established via text messaging, and electronic transmission of entertainment and information content; computer services, namely, providing on-line facilities for real-time interaction with other computer users concerning topics of general interest; providing internet video chat rooms. FIRST USE: 20091205. FIRST USE IN COMMERCE: 20091205

                  IC 045. US 100 101. G & S: Computer services, namely, providing information regarding and in the nature of on-line dating services, on-line video social introduction services, and on-line video communications in the nature of on-line social networking services; video chat services, namely, on-line social networking services for the purpose of providing an on-line computer database enabling strangers to meet and communicate real-time; providing a social networking website for entertainment purposes. FIRST USE: 20091205. FIRST USE IN COMMERCE: 20091205
                  Standard Characters Claimed
                  Mark Drawing Code (4) STANDARD CHARACTER MARK
                  Serial Number 85214314
                  Filing Date January 10, 2011
                  Current Basis 1A
                  Original Filing Basis 1A
                  Published for Opposition September 24, 2013
                  Registration Number 4445843
                  Registration Date December 10, 2013
                  **name and addresses ommited
                  Assignment Recorded ASSIGNMENT RECORDED
                  Attorney of Record Glenn A. Gundersen
                  Type of Mark SERVICE MARK
                  Register PRINCIPAL
                  Live/Dead Indicator LIVE
                  Before you start the GFY bullshit defense: The names are confusingly similar to the existing trademark, one that you have no right in. That is bad faith use if your use is similar to their trademark claim.

                  Comment

                  • datingfactory.xxx
                    Confirmed User
                    • Feb 2012
                    • 289

                    #10
                    Ok, roulette.chat was just an example it could have been bull.red or any other name.
                    I was just not sure if the whole domain including the .TLD was included in the "trademark"
                    I guess it is after the answers I got so far.
                    And I understand that roulette.chat can be use in bad faith and is very similar to chatroulette that is a trademark.
                    Skype: medlem1

                    Adult white label dating from datingfactory.

                    Comment

                    • suesheboy
                      Confirmed User
                      • Nov 2002
                      • 5211

                      #11
                      Originally posted by Barry-xlovecam
                      HOWEVER, what claims these people may have of your using a similar name in bad faith night have?


                      Before you start the GFY bullshit defense: The names are confusingly similar to the existing trademark, one that you have no right in. That is bad faith use if your use is similar to their trademark claim.
                      Well said
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