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Hi All,
I consider myself reasonably clued up on domains and trademarks, I own some of each. However there is a bit of a grey area that I'd like explore to get your opinions about, so as not to lose the rights to my domains.
If I'm trying to sell a generic domain, and the generic term makes up only part of a registered trademark, is there potential for TM issues if I offer a domain for sale to an existing trademark holder if the only the generic bit matches their TM?
Example:
Assume that I own the domain takeout.biz...
The term 'takeout'. It is a widely used industry term for food that can be taken away. The trademark 'takeout' alone cannot be registered for 'Take out food/beer/wine', it would simply be too descriptive of the product/service that is being provided and it lacks distinctive character alone and therefore cannot be registered.
People have tried to register this mark and failed for this reason see this, here's a quote:
However, it's perfectly legitimate for someone to register a mark that contains 'takeout' that makes it distinctive, for example:
Bob's takeout
Takeout monster
iTakeout
If I were to approach Bob's Takeout Co, the company that owns the rights to the trademark "Bob's takeout" for his takeout food business and offer the domain for purchase, do I open myself up to the reasonable likelihood that I'll lose my domain if Bob's Takeout Co were to file UDRP proceedings against me as a result. Would they find that the name is identical or confusingly similar because the generic part of the name partially matches the trademark?
I've looked it objectively based on the pros and cons by using the criteria that is used to determine the outcome of a UDRP decision (see the rules here), which are as follows:
If a generic term in the domain is subject to being classed as "identical or confusingly similar" to a trademark that contains the term, then I'd risk having to say "bye bye!" to my domains if I offer it to anyone.
Whilst I've used 'takeout' for this example, it could apply to most generic terms. Imagine 'hotel.net' for example, there are plenty of people that have trademarks that end in 'Hotel(s)', does that mean that all possible Hoteliers are off the table for outbound sales as a domainer?
Interested to know if you have any knowledge in this area and to know your thoughts...
I consider myself reasonably clued up on domains and trademarks, I own some of each. However there is a bit of a grey area that I'd like explore to get your opinions about, so as not to lose the rights to my domains.
If I'm trying to sell a generic domain, and the generic term makes up only part of a registered trademark, is there potential for TM issues if I offer a domain for sale to an existing trademark holder if the only the generic bit matches their TM?
Example:
Assume that I own the domain takeout.biz...
The term 'takeout'. It is a widely used industry term for food that can be taken away. The trademark 'takeout' alone cannot be registered for 'Take out food/beer/wine', it would simply be too descriptive of the product/service that is being provided and it lacks distinctive character alone and therefore cannot be registered.
People have tried to register this mark and failed for this reason see this, here's a quote:
REFUSAL TO REGISTER – DESCRIPTIVE MARK
Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.
However, it's perfectly legitimate for someone to register a mark that contains 'takeout' that makes it distinctive, for example:
Bob's takeout
Takeout monster
iTakeout
If I were to approach Bob's Takeout Co, the company that owns the rights to the trademark "Bob's takeout" for his takeout food business and offer the domain for purchase, do I open myself up to the reasonable likelihood that I'll lose my domain if Bob's Takeout Co were to file UDRP proceedings against me as a result. Would they find that the name is identical or confusingly similar because the generic part of the name partially matches the trademark?
I've looked it objectively based on the pros and cons by using the criteria that is used to determine the outcome of a UDRP decision (see the rules here), which are as follows:
- (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (see this):
It's not identical (pro), but it is contained within the existing trademark (con)
It's a dictionary term (pro) - see http://www.dictionary.com/browse/takeout?s=t
- (ii) you have no rights or legitimate interests in respect of the domain name; and
I haven't yet used the domain for business or other legitimate purposes other than to sell it once acquired (con)
- (iii) your domain name has been registered and is being used in bad faith.
I've offered the domain to a potential trademark holder (con)
I've bought the domain and intended to sell it for a profit (con)
If a generic term in the domain is subject to being classed as "identical or confusingly similar" to a trademark that contains the term, then I'd risk having to say "bye bye!" to my domains if I offer it to anyone.
Whilst I've used 'takeout' for this example, it could apply to most generic terms. Imagine 'hotel.net' for example, there are plenty of people that have trademarks that end in 'Hotel(s)', does that mean that all possible Hoteliers are off the table for outbound sales as a domainer?
Interested to know if you have any knowledge in this area and to know your thoughts...