Domain Name is Trademark Infringement?

are domain names available for sale infringement of trademarks?

[blonde]

Last year i wanted to put up a specific industry site for my products (widget). When searching for a domain name for "blue widget" i found www.bluewidget.com was taken but other alternatives were suggested. So i purchased www.blueswidget.com (for my site the plural of blue makes absolute sense) from a domain broker for $200.

Yesterday the company that owns www.bluewidget.com and company name is Blue Widget International attorney sent me a letter saying Blue Widget owns the trademark for the term "Blue Widget" and i am infringing on their trademark.

Am I?

I only use BlueSwidget with the plural of Blue

What should i do?

I have spent alot of money on the domain, building a site on my own (im not a webmaster, but the tips i get at WW helped me get pretty good placement) and advertising.

Any information will be greatly appreciated!

[shmekkyl]

Have you branded the domain? If you have that might be your only defense. There is still a good chance they can take it away from you still.

[rcjordan]

>Am I?

The short answer is "Yes, most likely." But you'll need a lawyer to find out for certain.

[Jenstar]

When it comes to trademarks, a name that is "confusingly similar" is protected. Otherwise, we'd see a lot of names such as "Nikes" "CocasCola" and "Sport Illustrated" which coud cause endless confusion for consumers figuring out who was the real company, and who was the copycat.

Because you were fully aware of BlueWidget.com, it is considered that you registered the plural version in bad faith - not knowing how trademarks are protected is not a defense here.

To me, this sounds as though you will end up having to hand over your domain name to BlueWidget.com due to trademark infringement. But because you have put a lot of money into BluesWidgets, consult with a lawyer who specialized in trademark law, particularly one who has experience with trademarks on the internet if you can find one.

[blonde]

thanks for all the help :)

i also found another company using similar non-plurals in their domain name, wonder if they are going after them also.

my atty is not specialized in this and says a specialist attorney will be very expensive, could be up to $100,000 which i don't have

he says if i am going to back down one way or the other, i should just do it.

the company making the claim says it is because it is creating "consumer confusion"

i wonder if i get domain name with other words added to the domain name if it would help?

this is really making me mad....i am in this to make money, not loose money or file bankruptcy. the last thing i am going to do is get a lawyer rich, i already did that in my divorce, and we ended up settling for what we agreed on when we seperated :)

[Jenstar]

i wonder if i get domain name with other words added to the domain name if it would help?

If you are thinking "Buy-Blues-Widgets-Here.com", you will still have a trademark issue.

When you are coming up with a new domain name, try not to do it with any of your competitor's URLs in mind. And when you come up with a few, try checking them in the trademark database it see if anyone has registered the same or similar names. This will save you trouble down the road.

found another company using similar non-plurals in their domain name

I would be willing to place money on the fact that this other site received a C&D too. Not all companies vigorously defend their trademarks, but the owner of Blue Widgets obviously does.

[shmekkyl]

You could try and see if they will give you the money you spent plus some extra for your troubles if you think its going to be a losing battle. They may just settle for a small amount rather than have to waste time and money getting it from you legally.

[blonde]

here is an example (not actual names)

lets say i sell hot tub(s)

they register the trademark for hot tubs
i buy website www.hottub.com
someone else has website www.hottubs.net

if i change my website to www.invigoratinghottubs.com i am still using their trademark words hot and tubs in my name

question is that what they have trademarked is just as generic and vague as "hot" "tubs"

do you think i can change my domain names like this and be ok?

[shmekkyl]

You can't trademark generic terms. Example, you can't trademark "ice cubes". They could trademark "icecubes.com" and could take away your domain if you had "icecube.com" perhaps. But they couldn't take away "reallycoldicecubes.com".

[blonde]

believe me...

they trademarked terms just as generic as:

hot tubs ~ company name is Hot Tubs International, Inc.
white bread ~ company name is White Bread International, Inc.

[woop01]

They could trademark "icecubes.com" and could take away your domain if you had "icecube.com" perhaps.

Dog.Com vs. Dogs.Com is a good example of where this isn't always true. Dog.Com tried to get the domain name Dogs.Com taken away from Pets.Com and later PETsMART.Com through ICANN and failed.

[TravelSite]

It sounds a tough one - on the one hand the other company wants to get all related domains to protect their brand (and they MAY be willing to go to court over it). On the other hand it sounds that you have been building up your own unique brand (though its in the same market) - and it is a generic term. Legally I suspect it could go either way. You shouldn't automatically assume that they are up for doing battle over it - they've sent the letter hoping to scare you into handling it over quickly - they may or may not be willing to go to court over it.

I think that you really need to speak to a lawyer. If you can't afford a suitable one (search around) do some research in Google searching for similiar cases (in your country). Perhaps there are some lawyer forums that you can post a question to (anybody know of any?). Responding with a lawyers letter of your own also lets the company know that you are 100% professional and legally aware. Speak to a lawyer.

[peewhy]

We've had a couple of cases in th UK.

Before Christmas the Queen lost a court case to possess the domain - www.newzealand.com

Now DVLA (drivers & Vehicles Licensing Authority ) have lost a court case to possess the domain www.dvla.com

In both cases, these were legally obtained and registered by commercial parties - however, Great Britain and DVLA seemed to think that they should have the right to them.

I noticed that the RAC don't have www.RAC.com either.

Boots, are an ISP in Hertfordshire lost their domain, boots.com to Boots the Chemist, under a trademark law.

I guess it depends on how the Judge sees things.

[blonde]

well my lawyer spoke to their lawyer and they are going after anyone using their trademarked generic terms in the name, and they are willing to pursue it in court.

they are unwilling to allow additional descriptive terms in the domain name as well, if their two words touch each other

i have quickly purchased some alternative domain names and will submit them to see if they will allow.....

regardless i can only spend about $1000 max on this....and that won't buy me much in the lawyer world :(

[rogerd]

i can only spend about $1000 max on this

This is a good example of "might makes right" in the legal world. The law is relatively unimportant if one side has far deeper pockets - they know they can get what they want by a good bluffing game and threatening to run up the other side's legal fees. It's too bad. Good luck, blonde!

[MWpro]

I have a question similar to this:

What if the domain name does not have blue widgets in it, but a different kind of name (kinda like Amazon, how the name doesn't relate to the site); and there are two domains that are very similar owned by different companies who are not competing in the same business (name.com and name.net). Could the business who bought their domain before the other one did force the other business to give it up?

[peewhy]

The court may see one as 'passing off', I'm not sure what the phrase is outide the UK but basically if it can be taken that you are passing off as being the 'blue widget' company or indeed taking advantage of their 'goodwill' - you may well lose the domain.