noob question about trademarked domains etc

[mineistaken]

Hi.

Ok lets say there is a big and famous site but domain name is nothing branded, but just simple words. Lets take hospitalityclub.org as an example. Words like hospitality or club are simple words.
What if somenone creates similar/same site and name it hospitalitybuddies.com or hospitalityfriends.org etc ?
Could they shut it down? I mean that would be obvious that new site want to bank on that famous name. But on the other hand hospitality and club are just "regular" words.

[docputer]

Try asking all the people that facebook sued last year. In some cases it might fly, but if they feel you are infringing, they will come after you.

[barcodes]

Originally Posted by docputer

Try asking all the people that facebook sued last year. In some cases it might fly, but if they feel you are infringing, they will come after you.

Didn't the guy from faceporn have problems with fb not too long ago?
He is still up and around. He may be able to give some good advice.

Good luck with it

[onwebcam]

If it's "obvious that new site want to bank on that famous name" then I'd say they could obviously clean out your bank account in court.

[mineistaken]

Originally Posted by onwebcam

If it's "obvious that new site want to bank on that famous name" then I'd say they could obviously clean out your bank account in court.

But on what grounds?

Same example. There is hospitalityclub.org and I create hospitalitygang.com
What could they have on me? That my site is also 2 word domain and one word is the same?

Or another example:
Hostelbookers.com and I create similar site on hostelseekers.com
There are many sites on domains hostel"anotherword".com

Ps: that face porn site had not only domain name, but also design/color scheme similar to fb

[Far-L]

Try using the simple word "Homegrown" and see what happens...

I truly recommend asking a lawyer familiar with Trademark and Copyright law questions like these and not a webmaster board with a reputation for a lot of keyboard warriors that like to blowhard about tons of things they have no idea at all about.

[blackmonsters]

Why even try?

It's not like you are going to get the other sites type-ins.

[mineistaken]

Originally Posted by blackmonsters

Why even try?

It's not like you are going to get the other sites type-ins.

Available domain name might be perfect for the site.

[raymor]

There are three key questions. First, likelihood of confusion. If SOME customers think that the second company is affiliated with or endorsed by the brand name company, that's a problem.

You mentioned "regular words". The question is if the words are "merely descriptive." The word "Apple" is of course a word, and a trademark. You can't marketyour brand of smart phone as "Apple" just because apple is a word. You CAN market pie as "apple" because the wired is merely descriptive of the type of pie. We ran into this when we filed a trademark registration for an AVS (adult verification system). Their name was something like eVerify. The ruling was that the name eVerify just described the service as being electronic verification, so it couldn't be registered as a trademark.

Originally Posted by onwebcam

If it's "obvious that new site want to bank on that famous name" then I'd say they could obviously clean out your bank account in court.

That's the third and possibly most important part. If one party is clearly being an asshole and trying to make money by jacking someone else's name, they can expect the judge to treat them like an asshole.

Cops, judges and juries don't take too long to figure out who they think the good guy is, and who the bad guy is. Sometimes they are wrong, of course, and sometimes an expensive lawyer can convince them that the law requires them to let the bad guy get away with it, but most of the time whoever looks like an asshole isn't going to be happy with the result.

[NaughtyVisions]

Originally Posted by Far-L

Try using the simple word "Homegrown" and see what happens...

[blackmonsters]

Originally Posted by mineistaken

Available domain name might be perfect for the site.

If it's not original then it's not perfect.

[mineistaken]

Will try to answer to those 3 questions

Originally Posted by raymor

There are three key questions. First, likelihood of confusion. If SOME customers think that the second company is affiliated with or endorsed by the brand name company, that's a problem.

There is no confusion of affiliation. For example there are many sites in hotel booking world. There may be hotelbookers, hotelseekers, hotelorders, hotelwhatever - they do the same thing (sell rooms) but not affiliated. Anybody can buy a domain name hotelwhatever.com and so the same thing.

So first answer - is no confusion of affiliation.

Originally Posted by raymor

You mentioned "regular words". The question is if the words are "merely descriptive." The word "Apple" is of course a word, and a trademark. You can't marketyour brand of smart phone as "Apple" just because apple is a word. You CAN market pie as "apple" because the wired is merely descriptive of the type of pie.

Thats understandable, apple is branded name. But are words from my example - "hospitality" or "club" branded? I doubt that.

Originally Posted by raymor

That's the third and possibly most important part. If one party is clearly being an asshole and trying to make money by jacking someone else's name, they can expect the judge to treat them like an asshole.

How is it possible to judge that? For example I thought of one domain name myself and only after that I found out that there is a similar and VERY popular one. Meaning that most of people could think that I thought of that domain name only because there is that popular site.
Once again take the same example. I thought of domain name hospitalityfriends.tld and then found out that there is highly popular and widely know hospitalityclub.org

[mineistaken]

Originally Posted by blackmonsters

If it's not original then it's not perfect.

What do you mean by not original?
Imagine there are no hotel names registered. You register hotelbookers.com and make it hotel booking site. Then I register hotelseekers.com and make it hotel booking site.

Is that not original? Ok seekers might sound similar to bookers. Instead I register hotelorders.com
Not original as well?

There are hundreds of sites with the first name hotel in domain name and lots of them are doing same thing - hotel booking. Does that mean only one of them is "original" ?

[onwebcam]

Originally Posted by mineistaken

But on what grounds?

Same example. There is hospitalityclub.org and I create hospitalitygang.com
What could they have on me? That my site is also 2 word domain and one word is the same?

Or another example:
Hostelbookers.com and I create similar site on hostelseekers.com
There are many sites on domains hostel"anotherword".com

Ps: that face porn site had not only domain name, but also design/color scheme similar to fb

If you are creating a site with the word "windows" in it and the site is in any way profiting from microsoft's trademark then you can be sued. I have a friend who just owned a name such as xboxchat and had to settle in the $xxxx range just for owning the name. It was that or spend $xxxx+ to fight it.

Now if you have a name such as domanname forum.com then another can have dnforum.com. Can you register dnforum.net (if it was available) setup a domain forum on it and profit just because "d" "n" and "forum" are generic letters/words? No, because Dicker has a trademark on it. He doesn;t own a trade mark on "domain" "name" "d" "n" "forum" or any derivation thereof but he does have one on "dnforum" and other dnforum's being utilized as a domain forum would be confusingly similar and therefore you would be considered profiting from his trademark.

[mineistaken]

By the way, GREAT analogy of my situation, adult example:

Milf Hunter and Milf Seeker sites. Its very highly possible that person who thought of one of those names had another name in mind.

[raymor]

Hotelbookers.com or hotelclub.com would be merely descriptive and therefore not protected.

hotwire.com is protected because neither hot nor wire describe hotel booking. The word "club" wouldn't be protected as a brand of travel discount club, or any other discount club. The exact same word, "club", IS protected as a brand of cracker (by Keebler). It can be protected for crackers because "club" is otherwise unrelated to crackers.

[mineistaken]

Originally Posted by raymor

Hotelbookers.com or hotelclub.com would be merely descriptive and therefore not protected.

hotwire.com is protected because neither hot nor wire describe hotel booking. The word "club" wouldn't be protected as a brand of travel discount club, or any other discount club. The exact same word, "club", IS protected as a brand of cracker (by Keebler). It can be protected for crackers because "club" is otherwise unrelated to crackers.

And if we are more specific:

Milfhunter.com and then someone does similar site on milfseeker.com

hospitalityclub.org and then someone does similar thing on hospitalityfriends.com

What would you say?

[raymor]

Originally Posted by mineistaken

And if we are more specific:

Milfhunter.com and then someone does similar site on milfseeker.com

hospitalityclub.org and then someone does similar thing on hospitalityfriends.com

What would you say?

Probably legal, but if milfseeker tries to copy everything milfhunter does, it's kind of a loser move. Better to put your own twist on it, hitting a slightly different market.

I just read a discussion where someone mentioned a dating site for people with herpes. About one in six US adults has herpes, so it's a huge group of people with a problem related to dating - who wants to tell their date they have herpes? With this site, you don't have to tell your date, because they already have it too. Whoever started the site solved a real problem for a lot of people and probably made a bunch of money. They probably did a lot better than if they made yet another dating site exactly like all the rest.

So milfhunter is cool? Do the same format with cholahunter. Maybe MILFsforcash.com.

[Barry-xlovecam]

From a domain dispute arbitration we won; Uniform Domain Name Dispute Resolution Policy

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.

note the use of the word and and not or; it is inclusive -- all conditions must be met to prevail.

[Far-L]

Originally Posted by NaughtyVisions

lol, no. Everyone knows we don't make threats...