Trademark infringement Question

Discussion in 'Legal Issues' started by LittleWing, Jul 18, 2010.

  1. #1
    Hi,
    My friend ask me about one of her domain name that may (or not) a trademark infringement but I'm not really sure understand about trademark infringement.
    So let me give an example..

    Trademark: bestbuy.com (according to http://tess2.uspto.gov/)
    "Online retail store services in the field of major household appliances, photographic equipment, telecommunication equipment, video equipment, audio equipment, personal computers and other home office products, imaging equipment, digital equipment, entertainment furniture, computer software, entertainment software including compact discs, digital versatile discs or DVD, pre-recorded audio and video cassettes, gift cards, batteries, automotive audio equipment accessories and related merchandise; promoting the sale of the sale of the goods and services by creating and implementing sweepstakes and other promotional offers in the nature of entertainment-related coupons and e-mail campaigns. FIRST USE: 20000123. FIRST USE IN COMMERCE: 20000123."
    Code (markup):
    let say her domain name is : bestbuytowels.com

    Her questions are:
    1. Is "best buy" not a generic term anymore ?
    2. Is her domain a trademark infringement ?
    3. How if domain owner not live in USA, will they sue her?

    Thanks.
     
    LittleWing, Jul 18, 2010 IP
  2. LittleWing

    LittleWing Greenhorn

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    #2
    4. Sorry I must add another question, how if domain names was bestbuysoftwares.com (example) is it a trademark infringement ?
     
    LittleWing, Jul 18, 2010 IP
  3. mjewel

    mjewel Prominent Member

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    #3
    I suspect that "BestBuy" couldn't get a trademark without the domain extension as it was deemed too generic/descriptive. They were granted a trademark for www.bestbuy.com and bestbuy.com with specific usage rights. They could certainly argue that similar names with the same usage is creating a "likelihood of confusion" if the other site is selling or offering similar goods. You could argue that your usage was descriptive and wasn't infringement. Of course win or lose, it could cost you a lot of money.

    It doesn't matter where you live, you can be sued or have the domain taken in a WIPO action.

    In reality, all that matters is whether or not they "think" it is infringement and want to take legal action. No one can answer that but bestbuy itself.
     
    mjewel, Jul 18, 2010 IP
  4. reelstuff

    reelstuff Active Member

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    #4
    Good question, the main thing is this what was the intention?

    Did the person intend to take advantage of the best buy brand name, or keyword?

    if the answer is no, then there is not a problem, but if it is perhaps or we dont know for sure, then
    there could be a problem, it is not really about what is likely it is about what is reasonable.

    Is it reasonable to believe that there was no intent to infringe, If you can prove that you really do have the
    best buy on paper towels then go for it, but if not, then hmmm, you may have to back up and look again, just a few thoughts,

    have a great day.
     
    reelstuff, Jul 19, 2010 IP
  5. LittleWing

    LittleWing Greenhorn

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    #5
    @mjewel & reelstuff: Thanks for your information guys, I really appreciate that.
     
    LittleWing, Jul 19, 2010 IP
  6. Le Dangles

    Le Dangles Member

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    #6
    I would have to agree with reelstuff, as long as you aren't trying to exploit the name bestbuy and use that to your advantage in your line of business you should be in the clear. But if you used a domain www.bestbuyxxx.com and tried to confuse your business with bestbuy's business then you will run into trouble.

    But if the domain name is actually bestbuytowels.com or bestbuyporn.com I wouldn't worry too much about getting sued because those domains have absolutely nothing to do with BestBuy and it wouldn't be worth their time to sue you.
     
    Le Dangles, Jul 19, 2010 IP
  7. contentboss

    contentboss Peon

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    #7
    /\ what he said. 'passing off' is grounds for action in most countries. Proving 'passing off' is the fly in the ointment, of course.
     
    contentboss, Jul 20, 2010 IP