Is this trademark infringement? (1.Viewing)
- Topic Starter MapleDots
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That was my thought as well when I saw the tweet. Spending so much money to promote a domain that he could lose.
Esdiel
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Crossed my mind too but I’m sure the law firm carefully considered that and it would fall under something like “fair use”, or that’s what they would argue if Uber wanted to fight it. “Similar” to searssucks.com and the other sucks domains/cases we’ve seen in the past.
That one is not run for profit, so something like Facebookfans.com could get away with it but FacebookLawyers.com would probably be in trouble.
rlm
Bonfire.ca
First off, note that UberLawyer was registered a few years before Uber existed.
The word uber itself has a meaning of "denoting an outstanding or supreme example of a particular kind of person or thing."
Therefore UberLawyer would be recognized on its own as non-infringing and legitimate domain and no problem at all using it as a lawyer's website.
However, since they specifically call out Uber & Lyft & ridesharing in general, obviously that's where Uber could make a complaint.
From a domain dispute perspective, I'd think their current usage is at least inviting a dispute. But the complainant has to show bad faith:
(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or
(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or
(iii) the domain was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
But I'd see it panning out like this:
(i) fail. Registered prior to Uber's existence by a few years.
(ii) fail. Registered prior to Uber's existence by a few years.
(iii) fail. They're not a competitor.
(iv) probably fail. I don't anyone is going to think they're hiring a lawyer that works for uber when they're trying to sue uber over an accident.
So I kinda think they might win the dispute (but you never really know...).
The word uber itself has a meaning of "denoting an outstanding or supreme example of a particular kind of person or thing."
Therefore UberLawyer would be recognized on its own as non-infringing and legitimate domain and no problem at all using it as a lawyer's website.
However, since they specifically call out Uber & Lyft & ridesharing in general, obviously that's where Uber could make a complaint.
From a domain dispute perspective, I'd think their current usage is at least inviting a dispute. But the complainant has to show bad faith:
(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or
(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or
(iii) the domain was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
But I'd see it panning out like this:
(i) fail. Registered prior to Uber's existence by a few years.
(ii) fail. Registered prior to Uber's existence by a few years.
(iii) fail. They're not a competitor.
(iv) probably fail. I don't anyone is going to think they're hiring a lawyer that works for uber when they're trying to sue uber over an accident.
So I kinda think they might win the dispute (but you never really know...).
This is the part I was thinking of, they are specifically targeting Uber and Uber can easily argue confusingly similar even though the domain was registered first. You can have domains registered at internet conception that can still be infringing on the trademark if they are operating in the same industry or a related industry or in this case targeting the trademark owner.
rlm
Bonfire.ca
I think it comes down to that bad faith part (iv) and whether a panellist believes that their usage would confuse the general public into thinking they were affiliated with Uber. Based on their advertisement and website, I would never think they were. Of course there is some interpretation there.
Of course a domain dispute is very limited in scope and recourse. Trademark infringement is a different beast and could be pursued through the courts as well.
davidm
BusinessRegistration.ca
No, it's UberLawyer .com is an example of nominal fair usage since the lawyer deals with Uber related matters. There was a similar UDRP decided recently:
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davidm
BusinessRegistration.ca
Read the decision in
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“
The principles established by the seminal Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 recognize that the Policy is not intended to prohibit, without exception, the incorporation of a third party’s trade mark within a domain name in all cases. The Panel finds that the Respondent satisfies each of the elements of the Oki Data test by offering public adjusting services independent of any relationship with the Complainant. The Respondent registered the disputed Domain Name to market its legitimate business as a public adjuster. The UDRP is designed to suppress cybersquatting, not competition, and for these reasons, the Respondent has legitimate interests in the disputed Domain Name. That the Complainant is irked that an insured would prefer to have an independent expert “on its side” is not the basis for a claim of cybersquatting. Finally, the Complainant argues that “Respondent’s bad faith is also evidenced by the fact that it owns no trademark or other intellectual property rights in the domain name.” If not owning a trademark were a disqualification to registering domain names 99.9% of domain names would be forfeit.
RDNH: The Counsel has crafted a complaint to mislead the Panel that the disputed Domain Name has only recently been discovered, that there is no history of Respondent’s representation of Complainant’s insureds over the years, and Complainant is “shocked” that the Respondent is representing Complainant’s insureds as a public adjuster in negotiating settlements of insurance claims. In failing to recognise this history, the Complainant has presented a false picture of the circumstances under which and for which the disputed Domain Name was registered and is being used.
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