Domain trademarking question
 

I was all ready to buy a domain and then a day before I was going to finish the deal I noticed that someone had just registered a trademark that was very similar. The trade mark is in the USA.

Lets say the trademarked domain is "digitalinformation.com" and the domain I was going to buy is "digitalinfo.com". (this is very close to the actual domain)

Their trademark covers the exact type of site I would be developing.

Now what if I formed an EU company and go my domain trademarked in the EU? I would not be physically doing any business in the USA. I would just have an online information/resource/review site.

Would there be any risk of the company with the USA trademark being abe to take my domain away?

Yes.....

O'RYLY? Please explain.

Have you checked to see if they files for an International trademark?

The closer you get to an existing trademark (especially domain trademark) the more likely you are to find yourself at the crap end of a lawsuit. Doubly so if you are intending to put porn on the domain or have a very similar product / business model as the trademarked domain.

HOWEVER, that being said, it is still an uphill battle for the trademark holder. They would have to show how your domain infringes, and potentially show confusion in their clients, and EVEN THEN, they still might not be able to win.

Could get interesting.

Alex

I found this good link

http://www.nmmlaw.com/publications/usmadrid.html

thats the shortest responce ive ever seen you write! congratz! :1orglaugh

:1orglaugh :1orglaugh :1orglaugh

Yes, the domain is at risk.

The problem is they were first with their trademark. "First use" is an important principle in intellectual property law, both with trademarks and patents.

Even though you are in Europe, it's possible they could file a UDRP against you. When you register a .COM domain domain you automatically consent to its jurisdiction.

They will argue you are preying on their registered trademark.

This is not legal advice and I am not an attorney.

I concur, however, I would also argue that "digitalinfo" is an awfully generic name, and so the trademark examiner is going to have to be convinced that the mark is non-generic.

Also, keep in mind that *filing* for a trademark is totally different than actually getting one. The US is a "first use" country, meaning whomever is the first to actually use the mark in interstate commerce, and can prove that use, will have first rights to the mark. So if they have filed a mark, but haven't made any use of it, you could challenge their application by filing an objection, claiming that you are also using the name, that you established use at the same time (if you did), and objecting to the mark being issued at all. Some other countries are "first filer" countries, so whomever files first gets the mark, regardless of whether it rightfully belongs to and was used by another company first.

As far as the EU, I also concur that you may run into a UDRP issue.

I'm no lawyer either, just been through a couple of trademark disputes, so your mileage may vary.

It basically depends on the type of person/company that registered the trademark. Many people make threats and then end up paying up or backing off if you put up a strong front.

On the other hand if you are dealing with a ball buster you may end up spending a lot of money to keep that domain and possibly still lose it in the end.

Ok this is a better example.

Let's say someone had a domain trademarked that was ComputerInformation.com

They not only have a trademark but have been using the domain for several years.

Now I buy CompInfo.com and build a site around that and am basically reporting on the same types of things.

Would you guys feel like you are in danger of getting your domain taken away?

ask a trademark lawyer, he will tell you that it's not a good idea. However you only know once you got sued and lost or won for sure.

Yes RLY

:disgust

You dont have to worry if the domain you like to buy is a generic name.

Make sure that the service you offer is different from the trade mark.

Make sure that your site will not be archived in the waybackmachine ( archive.org )