In a legal jam with Multi Million Dollar Comapny

Would you care to enlighten them?

 

Wakeboarding Magazine probably did not refer to the awards as "Wake Awards"

More than likely it was called "Wakeboarding Magazine Awards" or "wakeboarding awards"

I doubt it was wake awards as that sounds like an award for a funeral wake or as Sara mentioned an award for NoDoze pills.

OP needs to find out what the Awards were actually called.

If not "wake awards' then you are not stepping on their trademark.

Other posters are correct if you do not protect your trademarks then it is free to be taken up by others.

Since the magazine had not registered the domain, then it is clear they had no intent to use it nor protect it.

I would just keep the site and develop it. Let sleeping dogs lie.

 

There are a couple, actually. Just to name 2 of them:

www.bitlaw.com

www.chillingeffects.org

But some people still develop their own ideas of how trademarks are supposed to
work and still end up in trouble.

 

I am not a lawyer, but from what I have read I think developing the site "around their trademark" will get you in legal troubles.

I think you can develop the site around some other theme, but not what "has been a trademark" and "exists in your domain name".

paypaltalks.com was brought down by paypal.com for the same. Even though the owner of paypaltalks had a clear notification that the site doesn't belong to paypal, and is neither related.

Trying to offer some sort of "awards" on the site might also be considered as similar, although you might have a different name than what they are using.

You would be better consulting a lawyer on this matter.
Bye

 

A simple search on Google for "Wake Awards" shows that they do in fact call them the "Wake Awards".

 

If they have "Wake Awards" trademarked then the domain is theirs regardless of what is uploaded to it. That would make the domain cover the trademark 100% lol.

 

Trademarks are granted by classification - and there are over 40. It is possible, in theory, to have 40 different owners of the same word or combination of words. A very unique name would be different. Trademark law is often not black and white, but a couple of things:

Is a common mistake to think that one must have "trademarked" a term to have established rights. This is false. The US recognizes common law trademarks - a filing is not required (but certainly does add protection). Just like you can have a common law wife without any filing, you can have a common law trademark.

Just be "xxxxxxxx" is trademarked, it does not mean you own exclusive rights to the term and no one else can use it in a domain. What is protected is the class usage, which is often determined by the content of a site. You can't ride the goodwill established by someone else - or put content that is similar or of the same nature of the trademark holder.

If a common mistake to think that if you have site like "myspacexxxxxx" that its ok to use because it is "free advertising" and puts the trademark in a positive light. The trademark holder owns the rights to the name, for that particular classification, and you need their permission to use it (and they almost certainly won't grant it) regardless of how much of a positive you think it is for the trademark holder.

Adding words to a trademark, misspellings, phonetic spellings, do not automatically get around trademark infringement. If you are thinking about registering a domain name and are "hoping" to get some traffic or possibly be confused with another company's trademark - it is likely infringement and there is a good chance you will be sued or have the domain taken from you.

Checking the USPTO to see if a name is trademarked is a good first start - but it doesn't mean you can use the name just because it wasn't listed. A good trademark search runs a few hundred dollars and still doesn't give you a guarantee that you will be able to use the name.

 

Good post MJewel,

I've seen a lot of these types of trademark uses: fordclassifieds .com, dodgeclassifieds .com , etc. and the trademark holders have not pursed them (or have and lost).

What's your take on it? Can these sites defend themselves (if you take the legal costs out of equation).

 

If you know of specific cases where mark holders have lost against a party adding "classifieds" to their trademark, then I guess you have the answer.

A lot of trademark usage gets into a grey area and I suppose you could argue that the consumer wouldn't assume such a site was run or connected to the trademark holder - assuming the mark holder doesn't have any similar usage. Again, it comes down to prior cases and what the courts have ruled. fordsucks et al is another story - the courts have ruled this is free speech and that the consumer isn't going to think the mark holder would likely operate such a site.

You should always consider the legal costs, even if you think you are right. If one of these trademark holders decides they "think" it is infringement, then they could force you to spend tens of thousands - even six figures - in court defending this right. Even if you win, you will not be awarded your legal costs so you would need to decide if you want to spend a huge sum of money defending a domain against a large mark holder with deep pockets.

 

I don't know of any specific cases but I see a lot of commercial sites like those I referenced so I'm assuming that the companies in general are not enforcing their rights or it's within the allowable use.

Based on the examples I'm sure they would fold immediately given a C&D letter from the Trademark holder(s).

Another category (possible grey area) I see a lot are "used[TRADEMARKNAME].com."

Regardless, thanks for the post(s).

-jay

 

ok - in my opinion, not that i ama lawyer, but they have NO RIGHT to take the domain from you unless wakeawards.com is a trademark under Wakeboarding.
wakeawards can mean anything, and has nothing to do / realting to the company name or trademarks. If you want - you can make some nice cash selling it 2 them :> but otherwise, i think ur fine in the court of law.
peace bro - good luck

 

You foolishly emailed them offering to sell, so that hurts you in a trademark battle as far as your intent.

But you arent in a legal jam. I don't think they care.

 

If you think that is bad.... I owned GoogleCalendar.com

Talk about getting shafted... I thought I was safe under Google's developer program because I was offering "yourname.googlecalendar.com" redirects which virtually amounted to nothing.. but it was handy and it placed a small banner ad at the top of the page. I ended up getting $35 bucks and Google agreed not to sue. I was lucky.

 

The battle has ended with Wakeboarding Magazine and the domain I held "http://www.wakeawards.com" Considering how I know a few people in the Wakeboarding Indusry Matt HIckman the editor and owner of Wakeboarding Magazine, provided me with a 10 year prescription to the magazine for free. So I guess I got my 7 dollars worth out of the domain and no hurt feelings!

 

Sounds like a good resolution to the problem for all. If you're not prepared to battle the big guys don't send them a letter letting them know you are out there.

Glad it worked out.

 

Prescription lol

 

Is it worth thousands of dollars in legal fees, that is the question.