emailed a complaint on domain name

Discussion in 'Legal Issues' started by svfox, Oct 6, 2008.

  1. #1
    The domain is dictionary words.
    They say its a trademark.
    So I can trademark the entire dictionary and start suing people.
     
    svfox, Oct 6, 2008 IP
  2. Nonny

    Nonny Notable Member

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    #2
    No. A dictionary word can only be a trademark as used for selling particular categories of products or services. Different business can use the same trademark if it is for different categories of products.

    For example, "Apple" is a trademark used by Apple Computer for computers, and "Apple" is a trademark used by Apple Corps in the music business. That isn't without issues, of course, because the two companies have fought over trademark issues in court for many years (http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer).

    The question is whether the company that uses the dictionary word as a trademark and your doman that uses the dictionary word are in the same business. Are you trying to profit between the possible confusion between your domain's name and the company name? If you are, it's likely a case of trademark infringement.
     
    Nonny, Oct 6, 2008 IP
  3. Dave Zan

    Dave Zan Well-Known Member

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    #3
    Does the domain name show any content, especially anything associated with
    the possible mark holder?
     
    Dave Zan, Oct 6, 2008 IP
  4. svfox

    svfox Well-Known Member

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    #4
    yea, that is what they are saying.
    Looks like Im dead.
     
    svfox, Oct 6, 2008 IP
  5. Dave Zan

    Dave Zan Well-Known Member

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    #5
    Nah, you'll still live. You might have to transfer the domain name to them if it's
    matching their trademark, is unique, and showing hints of commercial use that
    is competing with them, but...you'll still be alive and healthy. :D

    (And if anyone's going to subsequently reply like fight back, things like that are
    not going to help anybody.)
     
    Dave Zan, Oct 6, 2008 IP
  6. svfox

    svfox Well-Known Member

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    #6
    i checked the words, and they are dictionary terms, but the trademarked it too.
    scholastic publisher.com

    So I know not to just buy dictionary words. Check them for trademarks
     
    svfox, Oct 7, 2008 IP
  7. Dave Zan

    Dave Zan Well-Known Member

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    #7
    That's actually one challenge here: registering a domain name yet ensuring it
    doesn't infringe an existing trademark. It can especially cause problems if you
    put something commercial like ads.

    It might interest you to know that as of this post, I'm not able to find any TM
    whatsoever for scholastic publisher (if those are the words being claimed as a
    mark, anyway). Don't take this as legal advice since only a lawyer can provide
    those, but ask the alleged mark holder what they're using the mark for, when,
    what registration number or so (if any), and where.

    That is, if you haven't transferred the domain name yet.
     
    Dave Zan, Oct 7, 2008 IP
  8. svfox

    svfox Well-Known Member

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    #8
    they are claiming the word scholastic
    and they say they have 120 other trademarks
    They did the harry potter book.

    But why didn't they grab this domain if they wanted it.
    It has been there for 15 years!
     
    svfox, Oct 7, 2008 IP
  9. Dave Zan

    Dave Zan Well-Known Member

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    #9
    Uh oh, I forgot about the Scholastic guys. Unfortunately yes, they have been
    claiming the word scholastic as a mark for publishing for who knows how long.

    Also unfortunately, your domain's showing ads for, of all things, publishing. I'm
    not optimistic on this one.

    They didn't register that domain back then because...they're not forced to. It
    sucks, but...that's life sometimes.
     
    Dave Zan, Oct 7, 2008 IP
  10. svfox

    svfox Well-Known Member

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    #10
    Yea, I have to do more research.

    And it didn't help the parking site showed ads like you said.
    doh
     
    svfox, Oct 8, 2008 IP
  11. campolar

    campolar Peon

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    #11
    if you dont care about the domain, just try selling it to them :p
     
    campolar, Oct 8, 2008 IP
  12. angiestarr

    angiestarr Peon

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    #12
    Tough spot!
     
    angiestarr, Oct 8, 2008 IP
  13. svfox

    svfox Well-Known Member

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    #13
    Unfortunately, its the #1 publisher in the world.
    I'm a bit at a disadvantage. haha.
     
    svfox, Oct 8, 2008 IP
  14. DeenaEsq

    DeenaEsq Peon

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    #14
    svfox,

    Yeah, I have to agree with DaveZan. You're out of luck on this one. Scholastic is a very well known company which makes their mark a "famous" mark. Famous marks have greater protection than regular trademarks. I'd hand them the name and be glad that they decided to send you the notice rather than sue you for trademark infringement.

    It's a relatively inexpensive lesson learned. Chalk it up to experience.

    Deena
    _____________________________________________________________________________

    Any opinions are offered without knowledge of the specific law of your jurisdiction and with only the limited information provided in your post. No advice given here should be reasonably relied upon by you or any third party without consulting an attorney who is aware of all of the facts and law surrounding your situation. Any advice given here is not intended to create an attorney-client relationship in any way.
     
    DeenaEsq, Oct 10, 2008 IP
  15. svfox

    svfox Well-Known Member

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    #15
    At least they paying me my reg fee so I don;t lose anything.
    That is cool.
     
    svfox, Oct 11, 2008 IP