Legal Question in Technology Law in Tennessee

Trademark infringment?

I registered XYZ.COM three years ago and activated the site 2 months ago to generate traffic and income from those who have similar personal and business goals. A non-profit has the name XYZ.ORG. They own a trademark on the name ''XYZ'' and ''XYZ CHARITY''. Their lawyer made a small offer to purchase domain stating that they would probably pay that much in legal fees to bring a lawsuit claiming ''market confusion''. The USPTO lists the names ''XYZ ENTERPRISES'' and ''XYZ ENTERTAINMENT'' that are registered with other individuals. I have intentionally used the name XYZ.COM (never XYZ by itself) in my website. Example: Welcome to XYZ.COM, and Take the XYZ.COM poll. I note that there are USPTO seperate trademark registrations for IBM and IBM.COM. I am thinking of attempting trademark on the name XYZ.COM. I have received alot of email at my site that was obviously intended for XYZ.ORG. So far,I have forwarded ALL emails of this nature to them. My site will market services that they do not offer, but some visitors and clients may be interested in services that I might offer. Question: If I never attempt to deceive site visitors, and do not offer the same services as they do, can I continue to use this site?


Asked on 8/21/02, 9:37 pm

1 Answer from Attorneys
Daniel Press Chung & Press, P.C.

Re: Trademark infringment?

It depends. Under the ICANN UDRP, to which you agreed as part of your domain registration agreement, they can try to claim the domain name from you if they can show that (1) the domain name is the same or confusingly similar to their mark (which it is - the .com won't help you there); (2) you do not have legitimate rights to it (i.e., you did not have a pre-existing trademark or another basis for such rights, which you probably don't have), and (3) you registered or are using the domain name in bad faith. If they can show (or create an inference) that your registration and use of the domain name was to divert their traffic, or trade on their mark (even if you don't offer competing services), that would be evidence of bad faith. You should consult a lawyer experienced in trademark law and particularly ICANN proceedings to evaluate this matter thoroughly. Note by the way that if you lose in the ICANN proceedings, you can sue them in court to try to keep the name, and not just the judge, but the actual standard applied in court, may actually be more favorable to you.

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Answered on 8/22/02, 11:34 am


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