Domain with similar name to real business?

Rasta_Cook

Rasta_Cook

New member
Apr 4, 2007
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Montreal
Let's say there is a store called "Electronic Shop", this is a real brick & mortar store but they also purchased the domain electronic-shop.com to do business online and/or give direction to their store locations etc...

Now, let's say that I would like to start an affiliate site for electronic products, I look for domains and notice that electronic-shop-online.com is available... would it be ok? am I exposing myself to any kind of lawsuit etc...?

I would think that this is ok, because the words electronic and shop, are pretty generic terms, and i wouldnt be copying their logo or trying to give the illusion that this is in fact the official online shop for the "Electronic Shop" brand.... so it's not like if i'm "stealing" their brand name... It's not like if the store was called Walmart and I went and purchased walmart-online.com, that would be deceiving...
 


I just checked the trademarks... as expected, its obviously registered since this is a retail store found across the country, here is what it says :

TRADE-MARK (Word):
ELECTRONIC SHOP


DISCLAIMER TEXT:
The right to the exclusive use of the word ELECTRONIC is disclaimed apart from the trade-mark.


INDEX HEADINGS:
ELECTRONIC SHOP


SERVICES:
(1) Operation of a retail business dealing in: electronic equipment; electronic goods; electronics; printed publications and educational materials relating to electronics; delivery, assembly and repair services relating to electronic equipment.

So, if I understand correctly, the word ELECTRONIC is not exclusive to their business? But how about the word "SHOP" ... It seems impossible that the word "shop" be exclusive to them... in reality they dont use the word shop, I changed the terms a bit but it shouldnt change much because they use a synonym like, store, boutique, market, etc... these are all generic term... their trademark is made up of 2 generic terms, very very similar to the example Electronic Shop.

Also, they specify that they are a RETAIL business... since what I would be doing has nothing to do with retail, would that help? Its not even an online retailer, its an affiliate site.

I dont know how trademarks work but, it seems logic to me that just because your retail store is called "electronic shop" does not give you the exclusive rights to all possible domain with these generic terms?

Realistically what would happen if they notice that I bought electronic-shop-online.com, they would force me to stop using the domain name, but i'd still be able to redirect it to another domain and keep the website?
 
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If you’re in the US check out the BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY v. SMACK APPAREL CO 12/15/2008 (google it) Fifth circuit court decision

The key points here are: “probability of confusion in the mind of the consumers”

and

“The Lanham Act provides that a trademark may be “any word, name, symbol, or device, or combination thereof that is used or intended to be used to identify and distinguish a person’s goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. A mark need not be registered in order to obtain protection because ownership of a trademark is established by use not registration”
 
Well, I can see how there could be some confusion, people might assume that electronic-shop-online.com is the online version of the retail stores, however i'm in Canada so i'm not sure how this legal precedent in the US would affect me, i'm guessing our laws are pretty similar tho.

Also, just to be clear, I wouldn't try to deceive users visiting my site that they are browsing the online version of "electronic shop"... When they would land on my site IF they know the Electronic Shop brand, it would be clear to them that this site isnt related to them. People legitimately type "electronic shop online" in google search to find electronic gear, not necessarily looking for the retail "electronic shop", especially international users which dont even know that this shop exists in canada.

Still is very interesting, so this means you can trademark some terms but if they aren't used and just sitting in a file somewhere, someone else can comes along and use it and you cant do anything.

Also, sorry to repeat myself but, what would be the most likely outcome IF they were to take legal action against me? Would I just have to stop using electronic-shop-online.com and give the domain to them? Would I be able to set a redirection (permanently moved) for a short period of time so that I dont lose all my serps rankings etc... ?
 
Rasta_Cook said:
Also, just to be clear, I wouldn't try to deceive users visiting my site that they are browsing the online version of "electronic shop"... When they would land on my site IF they know the Electronic Shop brand, it would be clear to them that this site isnt related to them. People legitimately type "electronic shop online" in google search to find electronic gear, not necessarily looking for the retail "electronic shop", especially international users which dont even know that this shop exists in canada.
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If it's all generics like "electronic shop online" I don't for see a problem because it's not brand specific. If you're a retailer (ex: BestBuy) then of course you're going to sell other brands (sony, ibm, dell, intel, apple, ect..), so again not a problem. But if you're only selling Dell, and market yourself as Dell-online you might get into some trouble.

Rasta_Cook said:
Still is very interesting, so this means you can trademark some terms but if they aren't used and just sitting in a file somewhere, someone else can comes along and use it and you cant do anything.
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I started to type out an explanation but probably better if you just read this: Overview of Trademark Law

The answer would be contingent on the exact words you're using. Same example as above (Dell-online = BAD / computers-online = OK)

Rasta_Cook said:
Also, sorry to repeat myself but, what would be the most likely outcome IF they were to take legal action against me? Would I just have to stop using electronic-shop-online.com and give the domain to them? Would I be able to set a redirection (permanently moved) for a short period of time so that I dont lose all my serps rankings etc... ?
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If they felt that you infringed / diluted you'd likely get a not-to-nice cease and desist where they'd threaten you with an exorbitant amount of damages.

Domain specifically if it's Dell or another big company they'd likely file a legal rights objection with your registrar or ICANN and attempt to get the domain; then sue you.
 
You wont expose yourself to a lawsuit if you are careful and reasonable. If you are running the affiliate site within the terms of the program (not targeting that similar URLs affiliate program will help you). Worst care situation is you will be asked to stop 1st and maybe hand over the domain so it depends how much time you put into it - you could lose your time here thats the biggest worry but you are not going to end up out of pocket or in jail.

Add a layer of protection with an offshore host/domain hosting co.

If you were a sneaky evil person and wanted to target the similar named sites affiliate program you could do that with a totally different site and then setup this similar URL as a content site with no monitization but use it to cookie stuff via the "clean" looking site - at your own risk of course.....
 
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