Similar domain, different TLD

[bear]

I just had someone contact me to ask a question about a domain or two they'd registered. It seems he belongs to a forum, let's call the domain "genericwebtermforums.net". They decided this would be a good name, and registered 2, one "genericwebtermforums.xx", and another "gwtf.xx".

They mentioned this on the forum they belong to, and the owner told him that he was not legally or morally allowed to use it in any way, shape or form because it's his trademark..although he has no legal trademark, nor does he own any version except the .net (all registered).
Now, I agree that setting up a similar type of site on the full version of the name would be at the very least ethically wrong (if not legally), but what of the short one? He's mentioned that he would name it slightly differently, while still taking advantage of the acronym, but would have a similar site (help forum). The person objecting does not own any variant of the short spelling.

I felt he was okay with using the short one, as long as he didn't purport himself to be associated with, or obtain any content from the other site, as well as making certain the full site name to represent the acronym were at least somewhat different from his domain/site (not just plural versus non).
Seems to me that the person objecting is just blustering when it comes to the short version, but probably has at least an iffy case with the full one.

Anyone have an opinion here? Love to hear it.

[zidev]

The .net owner has no rights to the full name, and even fewer to the acronym. Reason being that the trademark was not technically registered anywhere. I haven't seen any court anywhere base a decision on whois records :) (then again, IANAL)

-- HW

[RiderMayBail]

I would also suggest to seek some form of actual legal advice before proceeding, but it is my understanding, that the trademark must be registered in order to take legal action against the offending party. Seems about the most he could do would be to ask you to stop, unless he has the trademark registered. Even using the other TLD or the abbreviated version, you still need to be careful, as one of the first things looked at in trademark suits is the marks the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings). It's that last one that can be tricky.



On another note:
(then again, IANAL)

Perhaps this is shorthand that we should do our best to keep it from becoming mainstream, it just looks like that if it started showing up all over constantly, the NetNannys of the world would start to throw a fit. ;)

[nameslave]

I would also suggest to seek some form of actual legal advice before proceeding, but it is my understanding, that the trademark must be registered in order to take legal action against the offending party.
You don't *need* a registered trademark to go after infringements. A "common law" trademark (i.e. one of actual use) is good enough to start the fight. Of course, a federal (national) or local (state) registration would help build a stronger case.

[bear]

So, even though the short version is named differently (acronym expanded), he might still have an issue? I mean, the complaining site's name is a *very* generic web term, certainly in use by more than this one person, and undoubtedly for the same purpose.

If this person has a case, then so do the thousands of nearly similar names to generic terms elsewhere on the net. As an example, WHT would have a case to stop anyone from using "webhosting" in their domain or site's name, if they were creating a forum for webhosting discussion. Yes, it's that generic of a term.

Interesting topic. I've already passed on the advice to discuss it with a legal professional.