Am I heading toward a trouble?

Hi everyone,
I will do my best to explain the situation.

Short description: I have a domain name and part of which is trademarked and frankly I did not know about trademark when I registered the name.

Long description: Let us say there is a company "tacobell" (just an example and it consists of two words) and it is trademarked. I would say it is a medium size company that deals with selling "tacos".
Now when I registered my name, I registered "thetacobell.net" and started using to give free "tacos" (not quite similar tacos, but same field)

and this "thetacobell.net" is a site in my network sites and the network has a different name and may become a a company in future.

After I learned about trademark issue, I started worrying about it. I did some research and found the following:

Trademarked name: "Tacobell" and they have tacobell.com as their site

--> 1. there is a site tacobell.net and it redirects to a parked page
--> 2. There is a site tacobell.org and redirects to another site which for sure deals with "tacos" only
--> 3. There is tacobell.info and is parked
--> 4. There is tacobell.us and it is another site that comes close to "tacos" but not exactly.
--> 5. There is "thetacobell.com" and parked
--> 6. There is "KidsTacobell.com" and it deals with "tacos"
--> 7. There are bunches of sites like "Tacobell.com.au" and many other that deal with "tacos"

Now the big question, with "TheTacobell.net" and dealing with "tacos",, Am I heading toward any problem.

Thanks for help and it is appreciated.

 

Hi there,

Thanks for your reply.

The problem is, in less than 3 months, It got PR 3 and 100 unique per day. (predicted PR 5 in next update) Very well SEO'ed site and hence good search engine traffic too.

 

It's a gamble on your part. The bottom line is that you would be best served to get out of it now before you put more effort into it. Redirect your traffic to a different domain that does not have a trademark issue, and then if they ever contact you, just give them the domain or whatever. Sure they may never even contact you. You're probably thinking that those other companies that have similar domains are getting away with it. But, like I said, it's a gamble. Sooner or later chances are they will act on it. If you wait until then, it will be a lot more painful than it will be to address the issue now. You can really minimize damage by handling it early and not being in danger when the time comes. You won't have the option to redirect if they do "call" you on it, and you may also then have legal issues and such too.

 

You can keep the site. Just get a domain that does not have legal issues involed with it. Do the redirect, and then in a short time, all the work you have done so far should transfer over. You may need to make a few small tweaks to the site to change the name in whatever places you have it, but shouldn't be very major if handled now. Just remember...the sooner you take care of it, the less painful it will be.

 

I live in Canada

 

Hi there,
Tacobell is as an example I have used.

tacos01.com is available for registration, and "tacos" is there in many trademarks but they may not be able to catch me just for because "tacos" in my new domain, can they?

thanks

 

It really does come down to name-specifics, however, if I have read and understood your situation correctly you have a domain which is currently operating as THE{trademark}.com and deals in exactly the same products as the trademark covers.

I'm no expert but from what I understand of the legal situation, you could have the domain taken from you should the trademark holder submit a successful case to the appropriate ruling body (ICANN if it is a dot.com). You may even be subject to Court action to recover appropriate 'damages'.

A generic name, e.g. "taco", on it's own has no trademark issues, however, if you turn it into a trademark, i.e. "tacobell", it loses it's generic status and can be enforced as a trademark.

By the sounds of things you spotted a gap with the trademarked name and went for it (fair enough) but don't be surprised should they come after you about it. The example sites you cited, i.e. tacobell.net and tacobell.org, are not being misused in the way that you are misusing THE{trademark}.com by selling the same product. The reason those domains are sitting as they are is because they are not infringing the trademark whereas you are.

 

for example, tacobell.org and kidstacobell.com for sure deal with tacos. Also does it mean

I can use "tacos01.com" as it is available and still deal with "tacos"?

Thanks

 

could you just give the names? it'll make things a lot clearer and won't get you in trouble...at least any that's coming down the pipeline anyways.

 

Oops, ok, I didn't re-check before I typed those names. Like I said, it really comes down to name-specifics.

 

Just leave it as is and build a new site. Dont give it up or anything. You could even put all income it makes into a seperate rainy day account just in case.

If you ever get contacted you can offer them the domain in return for no further action - they would probably take it to save time and effort. You aren't attacking their brand and it would just be bad PR for them to harass you. Also, you can explain to them that now it is an old domain etc etc you have actually increased the value for them.

All just my opinion..

 

hi everyone,
Yes as said, the site is less than three months old with PR 3 and little nice traffic, no income yet.
I may just go for another good name and announce it on this old site and take my time to transfer it slowly and use the old name to redirect until the come after me.

Then the question is if I redirect a PR 3 name to a new name, will the new name get any PR?

Thanks

 

Yes,

or something like that..

 

I am a firm believer in better safe than sorry. You may be getting 100 uniques a day right now, but that really won't generate much business for you. Down the line you (in 1-3 years) you should be looking at 5-8k uniques a day.

As far as a PR3 right out of the gate...PR doesnt mean a thing...and you can get a three with your eyes closed.

My advice, and I deal with this sort of thing often in my business...is to move on to a new domain. Why risk it all? Buy a new domain...do a 301 redirect and start seasoning your new domain.

 

There goes my dreams for "thedigitalpoint.com"

 

Hi,

Yes, with all the learned advice I got from DP, I already took steps to solve this once of all. I registered a unique name already, which I found after lot of hard work so that nobody else can claim that name later.

I just did not do 301 redirect yet, but letting my visitors know that we will have our own brand name soon. And soon, I will do the 301 redirect and be happy..

Thanks everyone,

 

Thanks for making me crave tacos now jerk