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|Domain Name Infringement Is This A Violation|
Does a trademark, also mean owning rights to any city associated with it?
A few months ago, I read a press release announcing that a popular hotel chain was going to be opening a new hotel in my city. I went ahead and purchased a domain name like cityhotelname.com and started developing a content site about the hotel.
I was not trying to be misleading. I stated on the website that it was not the official site for the hotel, and linked to the official site on every page.
Now I've got an attorney for this hotel chain contacting me saying that I am breaking the law, cybersquatting, and infringing on their trademark.
Am I? If someone owns the trademark to a name, do they also own the trademark to any city that may be associated with it?.
I've decided not to fight it. I have informed them that I will transfer the domain to them. I'm just curious to learn legally what are their and my rights regarding this issue.
SenorLoco, a fan site for a hotel? Give me a break. ‘Eres loco verdad!
|If you have their Trademarked name in your URL ... |
... What you need to do is get citynamehotels.tld and then make it hotelname.citynamehotels.tld or citynamehotels.tld/hotelname/ and then permanent redirect ASAP to your new site.
But even then you'd have their trademark in your url. Are you sure the protection is confined to sld names?
They probably couldn't argue you took away their name, but you might still be infringing their trademark?
Personally I wouldn't have registered the domain in that manner if I wasn't ready for a fight. To me it would be obvious that they would repsond, I find it interesting that they came acrros this so quickly.
I have to say you must be cautious but I (to no surprise of some of you I am sure) somewhat agree with Lobo here. Why register a domain just to lay down when it's legallity is challenged? Would he lose a desicion by governing bodies? Most likely yes he would, but as pointed out how far would this hotel be willing to go, and could he made a deal before they take it all the way? I guess we won't know.
It just seems to me that if you are willing to go as far as registering the domain and put up content that you would actually put up some sort of defense for it's existance unless of course you really did do all this in bad faith.
Believe it or not you do have a claim to the domain, a small one, and one that may be overshadowed by this hotel chain, but you do still have some rights as the owner.
What hasn't been discussed, and this is something I have mused about is... Did the person who sold you this domain do so in bad faith as many here are saying you have absolutly no claim or ability to use what you have purchased. So why was it sold to you? How is it that you are able to purchase a service that is imposible for you to use under all the laws that are being quoted here?
I like to see people stand up for what they believe is right, even when all are telling them they are wrong. But as pointed out here, you must pick your battles carefully, what you could lose and what you can gaim must be evaluated by yourself to determine if this would all be worth it. Larry Flint did it.
[edited by: Demaestro at 5:21 pm (utc) on Oct. 24, 2006]
What if you make an anti-hotel chain site? I believe this is perfectly legal. I see people using trademarked names in URLs all the time such as "www.thiscompanysucks.com"
As long as you make it perfectly clear that the company is in no way endorsing the site isn't that what gets you off the hook for infringement?
What I have been able to glean from looking at many examples in this particular market is that the players in this market space intend to profit from the brand. The ratio of actual "sucks sites" to famous mark registrations is likely 1/1,000 or more. Their absence of good intent usually "leaks out" - for example, by parking famous brand domains that then are populated with links to the brand's sale venues - and therein lies the rub.
This space will continue to be a problem for famous brands until they decide to take the players - the domain registrants and the companies that enable them to profit - to task. In part, brand holders are victims of their own failure to act: Hit the agencies that enable monetarization. Defensively register likely trademark search phrases. Etc. Pity the domain holder that encounters the brand holder who decides that the better course of action will be bankruptcy (of the registrant) instead of bargaining. I've seen versions of this in approach in action, where someone decides that the better lesson will be to penalize, not reward, the dubious character. I've also seen people who have never recovered from the person/company who decided to take them to task. Somewhat sad and pathetic. Typically an element of remorse: "I should have known better."
Given that brands pay for advertising, it's a bit shortsighted (dimwitted?) for the brand holder to NOT register 1-offs of their brand: BuyBrandX, CompareBrandX, DiscountBrandX, etc. IF people are searching those terms and that's what motivates the brand squatters then why not step in - as brandholder - and act by registering the 1-offs? It's not merely defensiive. It's proactive. Take the type-in traffic, cut out the squatters and reduce your PPC spend. Doh! (I've also seen growing evidence, over the years, that this practice is increasing.)
As far as I can tell the smarter/better parking companies are starting to avoid famous mark domains and some have done so for awhile, as well they should. I cannot imagine a jury would be overly sympathetic towards any company that played host and profiteer to portfolios containing 1000s of obviously famous marks. Why risk an otherwise profitable model? Someone likely will fashion a claim for punitive damages in this area and make it stick, bankrupting one of the larger parking services (if they don't wake up).
Still, I routinely see evidence of long lists of famous mark domains being either "tasted", registered or moved around. Every business domain has its . . opportunists? Exploiters? Scoundrels? Thieves? Unsavory types? Heroes to the underdogs?
I just call them risk takers, as many of the players are otherwise people whom you might enjoy drinking a brew with. I just don't want to be around them when the FBI shows up. ;0)
[edited by: Webwork at 6:22 pm (utc) on Oct. 24, 2006]
"What you need to do is get citynamehotels.tld and then make it hotelname.citynamehotels.tld or citynamehotels.tld/hotelname/ and then permanent redirect ASAP to your new site."
"But even then you'd have their trademark in your url. Are you sure the protection is confined to sld names?"
"They probably couldn't argue you took away their name, but you might still be infringing their trademark?"
This is my whole point that the WIPO circumvents due and fair legal process (as in Trademark Vs Freedom of Speech right to comment on that Trademark).
Yes, absolutely, if you use Trademarkedhotelname.citynamehotels.tld or citynamehotels.tld/Trademarkedhotelname/, the hotel group can come after you for unlicensed use of their domain name THROUGH THE COURTS. They can come after you for using Trademarkedhotelname in your html.
Your higher legal arguments (depending on what you are doing, selling their hotel rooms or warning people about them) would be;
a) If you are legitimately selling their hotel rooms (in that you can legally and physically do this), they can not stop you from telling people what it is they are buying OR restrict your legal business.
b) If you are warning people about their hotel, that is your legal right to Freedom of Speech and the hotel group can not use Trademark law as a ruse to prevent this. If they do not like that and believe you are defaming them, they have to sue you for libel.
Either circumstance, you are almost guaranteed to win the right to use their Trademark.
But now look at the WIPO domain dispute mechanism. Even though your legal rights are greater than that group's legal rights to unconditionally protecting their Trademark, the WIPO absolutely, positively will "ignore" your higher legal rights to doing business, freedom of speech, etc. as they solely adjudicate based on Trademark law in application of the tld's they have been given jurisdiction over by ICANN etc.
I said "ignore" because, critically, they bypass it. What the WIPO do in any domain dispute is to ask the complainant and respondent about any other legal action going on regarding that domain. They do this as they have no authority to make a ruling when a higher "court" (the WIPO are only a de facto court and the lowest form) is involved.
Therefore, if you wish to exercise your legal rights as a respondent / defendant in a WIPO domain dispute, when you receive the notification from the WIPO you need to start legal action immediately against ICANN and the hotel group (in this instance) as co-defendants in the courts and inform the WIPO of this (no need to do anything else really); the WIPO then have no choice but to dismiss the claim or put it in abeyance until the other legal action is completed.
This is a joke, because filing a WIPO complaint for US$1000 which they know they will win (if you use their Trademark name in the domain itself) means you have to spend a damn sight more to defend your rights in a real court; the WIPO therefore creates an unlawful denial of justice in domain disputes.
Moncao wrote an excellent argument, and I also have to second his tactics.
Although it does "sound" in this case that SenorLoco was trying to take advantage of the new hotel - if s/he create a fan/critical/parody site, and both the hotel business and s/he is based in the U.S. I would not give up the site and domain so easily.
There are ample cases where such sites were protected in the US.
Back in 2000 I bought a domain name--a creative shortening of a two-word phrase that was originally coined by a humorist in the mid-20th century, then appropriated by a large corporation (and the spelling changed at humorist's insistence), and finally passed into common usage (appearing in several dictionaries both as a compound word and a two-word phrase). My site was noncommercial and didn't have much to do with the corporation... until one day in 2002 I was looking to beef up my home page and after about 3 minutes of research via Google and 10 minutes of thought, wrote a little blurb about my inspiration for the name and stupidly included a couple of sentences about the corporation after confusing a desert in Nevada with a desert in California.
Two months later I got a letter from a law firm in New Jersey. The lawyer liked my use of the word "legendary" in reference to their client, but said I had some factual errors--but what do lawyers know? Last I checked the Mojave Desert was a desert. Anyway, she objected to my use of the phonetic form of the company's division name. In the envelope she included a bunch of trademark filings for the name--all but one were for T-shirts, mugs, and nick-knacks the company sells to promote their legendary division--and a list of some thirty of forty domain names they wrested away from cybersquatters. She suggested I remove any reference to her client that might make it seem as if I had some tie to them, and mentioned that if I ever commercialize the site they'd be back.
So I did a lot more research and carefully thought about why I'd chosen that name. It was more of a parody of Bob Lazar, secret government laboratories in the Nevada desert (I was originally thinking Area-51), conspiracy theories involving little green men, and X-Files weirdness. So I wrote that and moved it to my history page. Then I created a page of my research for the origins of the name, the company's use of the name, and modern usage, all with links. Yes, the company's division name and the company's name is on my website, but so that I can say I'm not affiliated with them.
I never heard back.
I think it was about 2003 when I read in the tech news a story about this same company loosing a WIPO action against a Florida speed shop. The judge said that the speed shop was using the two-word phase in the same way, but then it had become a dictionary term for that use, and it was in a different industry and unlikely to be confusing to the public. Also it did not appear to be cybersquatting as the Florida company was using the domain name to promote their own unique business.
Oh, in 2004 I interviewed for a job at said legendary company (different division). Unfortunately, I didn't get it. Too bad. Looked like fun and paid quite well. I doubt that sort of affiliation would shield my domain name.
I guess the moral of the story is: If I want to mock Bob Lazar and the UFO crackpots I shouldn't go dragging some powerful company's name into it. Their only involvement with little green men has been to run a few famous projects through Area-51.
Live and learn.
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