| This 38 message thread spans 2 pages: 38 (  2 ) > > || |
|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.
|If someone owns the trademark to a name, do they also own the trademark to any city that may be associated with it?. |
There is no easy way to answer that question because thare are many factors involved.
However, here is one example of the right way and wrong way if it is a generic term.
Suppose the name of the hotel chain is Green Gardens. You cannot start site citygreengardens.com and have it be about hotels. However, if you own a landscape business you can use citygreengardens.com for a site about landscaping.
|I went ahead and purchased a domain name like cityhotelname.com and started developing a content site about the hotel. |
You started a website about one hotel in one city?
Leaving that aside for the meaning to sink in, you say "cityhotelname.com", but what you actually did was "citytrademark.com". Nuff said.
>> 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.
don't waste any more time on the site IMO. Given that they are a well known chain you are doomed. I have a feeling that "Hotelname" is something like Hilton, Marriot or Accor etc.
Thank you all for clarifying this for me. I learned something new today. I will follow your advice.
But can't a hotel that is not scheduled to open until 2010 have a fan site? Must we wait for the hotel to get around to offering info about the property?
[edited by: SenorLoco at 4:35 pm (utc) on Oct. 20, 2006]
If you want to run a fan site for your local motel - or the local MacDonalds, that's just fine and dandy; but be careful how you use their name and logo.
But I'd stick to trainspotting - at least they move ;)
I have a fan site for along-defunct musical group. Like many other fan sites, I used their logo. Following a complaint from an ex-member - with his own site - we all got a legal letter saying "he's grateful for your interest, but if the logo is not removed ASAP, see you in court".
I removed the logo :)
[edited by: Quadrille at 5:23 pm (utc) on Oct. 20, 2006]
Don't give in too easily.. possession is still 8/10ths of the law here..
there have been many cases of people choosing domains to attack companies using the company name and it has been validated in court..
if they want the domain then suggest they pay you for the time and effort you have put in to it.. as wells as the domain.. I'm sure it would work out cheaper for them than to file at court..
they may not be interested, but do let your back go just yet..
[edited by: Lobo at 10:06 pm (utc) on Oct. 20, 2006]
and presumably lobo will pay your legal costs if the advice is erroneous ;-)
>> Don't give in too easily.. possession is still 8/10ths of the law here..
and that's good enough for a $100K fine and god knows how much more in trademark infringement.
Listen if you want to get some legal advice then do so.. <snip>
The reality of legal procedings and business are far different to the geeky conjecture you are being adviced here..
It's like school boys trying to give you scary advice, based on a little knowledge they think they have..
It's your business , play it out, negotiate..
As I say, because this companies legal office flaps their wings doesn't mean you have to crumble at the first flurry, it's all posturing at this point..
[edited by: Webwork at 1:45 pm (utc) on Oct. 23, 2006]
[edit reason] Language [/edit]
Lobo I have been in the domain business many years now and the advise you are giving is extremely dangerous.
Here is the Official rules used in a UDRP ..
4. Mandatory Administrative Proceeding.
This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/udrp/approved-providers.htm (each, a "Provider").
a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
SenorLOco you will lose on all 3Counts:
 your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(It is confusingly similar as you admit you registered company name)
[2)you have no rights or legitimate interests in respect of the domain name; and
(Infringing on the Hotels NAME is not a legitimate interest)
(3) your domain name has been registered and is being used in bad faith.
You fully admit you registered the domain and "started developing a content site about the hotel" a website on the complaintants TM
My advise is 1. Transfer the domain offer to the TM holders and,
2. Dont ever stand on a high cliff with Lobo .. (the drop is a lot farther than what he says it is)
Here is a list of @ 10,000 domain disputes. You can always read through them and see where you stand.
If you happen to come across one in which the respondent registered and is using the existing trademark of the complaintant, in the same industry as the complaintant, and the domain name was not ordered to be transfered let me know.
Here is a good one similar to your situation:
>> 2. Dont ever stand on a high cliff with Lobo .. (the drop is a lot farther than what he says it is)
Whaaaaaaaaaaaaat? Lobo said so isn't a valid and legitimate defense in court?
Lobo: "Baseball's New York Yankees, together with Major League Baseball Properties, filed a Christmas Eve suit against Brian McKiernan, a Queens, New York, owner of newyorkyankees.com since 1997.
The lawsuit's primary charge of domain-squatting cited the Trademark Cyberpiracy Prevention Act, which Congress enacted in November to outlaw cybersquatting. The list of charges also included trademark infringement, false representation, and trademark dilution. "
Try going to newyoekyankees.com now and see who won.
"Congress has made it official: Those who hoped to make large sums of money by registering internet domain names that intentionally incorporate the trademarks of others are out of business."
"In November 1999, President Clinton signed the Anticybersquatting Consumer Protection Act (ACPA). It imposes civil liability of up to $100,000 in statutory damages for anyone who, with a bad-faith intent to profit, "registers, traffics in or uses a domain name that is identical to, confusingly similar or dilutive of" an existing trademark or personal name."
so yeah, go to a lawyer, spend a few $k only to be told that you need to scrap the idea. Maybe 10 years ago you could have gotten some cash from them; it is no longer a good idea.
See what I mean.. so wrapped up in cases that may prove their point and then totally missing the point by not being able to get their head out..
everything has to go through it's due process, this can take months and in the intervening time their are options for negotiation.. that is where you have space to manouver.. this is not a total loss..
The truth is any company has to prove these points... 'bad faith' 'intent' not to mention 'legitmate claim' ..
If the company wants to make a point then you most probably have no financial backing to hold on to it or indeed would want to.. but you can negotiate a reasonable financial get out, and initially you have to let them know that you will not back down at the first volley..
Clearly these people are academic or geeks who have little business knowledge, judging from their over reacting answers.. all i'm suggesting is that you play that process through and come out on top.. completely possible and justified..
other than that it amuses me when people like dauction
feel they have to verify their credentials lol .. when it is clear in his answer he has little real life experience of it.. what is on paper is very different from the process.. oh! I have over 15 years experince of doing actual internet business, including domain dispute.. does that mean I win ha ha!
[edited by: Lobo at 2:15 pm (utc) on Oct. 22, 2006]
WebWork is right, Lobo is clearly out of line refering WebmasterWorld members as academics or geeks. :)
Lobo, would you consider this statement bad faith.
|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. |
We already know that the hotel has a trademark for the name, The OP does not have any history of using the name and the only criteria left is if it was bad faith. To me his statement would show bad faith even if that was not his intention.
Talk about the issues, not each other, unless it's to pay someone a compliment for kindly sharing their knowledge.
Calling one another knuckleheads is acceptable so long as it's done in an exceedingly funny and subtle manner, and is handled in an otherwise - and always - respectful manner.
Repeated, simple minded flaming and name calling will get your posting rights suspended or terminated.
[edited by: Webwork at 4:25 pm (utc) on Oct. 23, 2006]
I believe my assumption is correct unless you feel calling someone academic is an insult?
The perspective they offer does sound as if it is coming from a purely academic stand point and bares little relation to acutal process.
there is no point in offering massive court cases as if this is some sort of proof of what is going to happen, only academics do this..
in fact all conjecture..
I have been involved with 6 actual cases of domain dispute either involving myself and companies or claiming on behalf of my company and have a good idea of the due process.
We are not talking large amounts of money here, but if this is approached in a businesslike manner than he can recoup some time, effort and money usually between £2000 - $5000 ..
The letter he has received is standard issue, to see if he will crumble without recourse, your advice was to say, yes fall apart, and give in as you stand no chance.. that advice is based on lack of knowledge, ignorance and fear..
[edited by: Lobo at 8:50 pm (utc) on Oct. 22, 2006]
Lobo, I think that there are 2 seperate factors we are discussing here.
I was focusing on this part, in which the OP asks what are his rights to the domain.
|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 suggested that it is not in his interest to pursue developing a site with that domain and offered cases to support that he will probably lose a WIPO decision.
I think you are discussing this part
|I've decided not to fight it. I have informed them that I will transfer the domain to them. |
In which he is going to relinquish the domain without compensation and you suggest he may be able to collect some compensation.
Or are you suggesting that he pursue developing the site with the domain in question?
re :lobo ..
Oh dear.. I wish I could post and eat dinner at the same time ..( however ..spoiling dinner is a sin ..get thee hence satan ) ..so I'll finish dinner ..
"J" ..you need to get a script in here to improve the quality of the mythological nordic creatures ;-)..( the current batch are no real fun and their knowledge of grammar and syntax is sadly deficient ..thus making intelligent debate somewhat difficult ) anyway ..for now ..desert and armagnac are beguiling me with their siren songs ..On second thought ...you sure you aren't making "solo mio" up ...for post bait? .. ..gwaan ..you're puttin us on ..;-)) )..
Lobo the very fact that you claim to have been involved in 6 domain disputes speaks volumes..
Please go away and quit trying to make a buck off of other peoples TM's and quit acting like it is an "acceptable" business practise ..
No, the guy is perfectly at his own discretion to do what ever he wants..
although he saw an oppertunity to create a site that would be of interest to others and it turned out the company did not want him to do so, is the situation, I believe he was doing this in some good faith and did not expect the responce..
I was simply pointing out a position of strength that he has..
I find it more disgusting that bigger business and lawyers will try to use muscle to take over or get what they want, and would always suggest that people fight back against that..
Due to his lack of experience in the matter and the rediculous scare tactics by some of the posters in this thread he has done exactly that and capitualted without any negotiation.
This is a rich company who could well have and would have paid some compensation for their own inadequacies in not properly securing their brand..
As the matter is over with the thread is pretty much obsolete, but perhaps for future refference, some of you could be a little more savvy in the future instead of trying to be so busy in proving how clever you are in terms of what you've read in a book..
[edited by: Webwork at 1:40 pm (utc) on Oct. 23, 2006]
[edit reason] Charter [webmasterworld.com] [/edit]
Lobo has a point as far as any legal matter, is all about who shouts the louder and groans the most. Laws are all subject to interpretation, and yes the chain - Disney? has to prove their claim first.
I too would not backdown or give them the domain so fast. I would not ask them to pay for the "efforts" put on a fan site though. But the domain, they can buy if they really want it. If you yield completely they could come after you later. You have to make sure that any settlements leaves you scott free and safe from future attacks and claims from them.
Having said that, I always chose my battles and this is not one I would have even ventured in the first place. Life is too short.
Finally, remember that for any trademarks, the owner has to continuously prove that he defends it when it is attacked. That's the first reason why they sent you a notice. Thus even registered trademarks are only as safe and protected as the effort its owner is willing to invest.
<Snip>.com doesn't seem to point anywhere whereas newyorkyankees.com seems to be a site about men in caps playing rounders ;)
[edited by: Webwork at 4:43 pm (utc) on Oct. 23, 2006]
[edit reason] Charter [webmasterworld.com] [/edit]
davec, yes, rounders is a very popular sport in the US and its colonies, no doubt due to its similarity to cricket. Believe it or not, it's big business over here, and that "Yankees" team is one of the most successful....
What Lobo is saying about not backing down, incredibly, does make sort of sense. But sense from the stand point of someone who has nothing to loose. When you have something, risking it all for peanuts sounds crazy. Yet someone in South Africa, who owns peanuts, would not find this to be that big of a risk (as the return, for their standards could be huge). It seems hard to believe, but there are many places on this planet where the per capita income is well under a thousand dollars a year.
Giving legal advice based on having nothing to loose is a VERY bad idea. Most people here have far too much to loose to be risking everything over a few thousand.
Fortunately, there are top posters like Quadrille, Webwork, leosghost and others to protect the weary. I am always glad to see you guys whenever you post, I feel I know you. I have read these forums for the last 4, almost 5 years, and have developed a profound respect for all the quality members of this forum; these members set this forum above all others in the world of webmaster.
BTW, I am proud of being a geek, and wish I could call myself an academic scholar; I will keep studying to earn myself this title.
Never mistreat geeks, you may work for one some day (someone famous said something like that) ;-)
The WIPO, as is their policy, will most likely interpret "negotiation from a self-proclaimed position of strength" (on top of someone else's trademark) as evidence not of cybersquatting, but of BAD-FAITH cybersquatting.
Think of them, if you like, as geeks with guns.
3.6 Can statements made in settlement discussions be relevant to showing bad faith?
Consensus view: Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner launches a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also the legal criteria for showing bad faith directly specifies that an offer for sale can be evidence of bad faith
I would suggest everyone just for the sake of refreshing ourselves with WIPO procedures and how they make decisions to read..
Why not sell the domain to the hotel at a marked up price?
They have the right to get that name,almost 100% that you will loose WIPO case if any
You will lose. The hotel chain need only file a US$1000 domain complaint with the WIPO (no friends of mine - understand, they are there to protect the wealthy Trademark owners, not to adjudicate fairly as they claim - ICANN washed its hands of the process and gave the WIPO total decision making control EVEN when the Trademark holder is filing to limit your legal right to freedom of speech). If you have their Trademarked name in your URL and you are presenting a site about one of their hotels you WILL lose at the WIPO; I would bet on it. Your only recourse against the WIPO is then to sue them in Switzerland (you need very big pockets for that) or ICANN in the USA for breaching your constitutional right to freedom of speech; Good luck.
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.
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