Valid domain use?

[FilthyCro]

Hi guys,

an associate of mine is interested in starting a site in the optical niche.

he wishes to use the domain xyzlens.com.au

However in Australia an optical company already exists trading under the name xyz AND is trademarked.

Is he just asking for trouble?

 

[Cooper Mills DomainLawyer]

yes

 

[DavidL]

If he only sells XYZ lenses and makes clear his relationship (or lack thereof) with XYZ, he could be OK wouldn't he, Erhan?

 

[FilthyCro]

XYZ is not a brand of lens it is a brand of optometrist.....he wishes to sell lenses only

The optometrist owns xyz.net.au

He wishes to create xyzlens.com.au

xyz is itself trademarked

Also xyz.com.au is taken and used by another company in a different niche.

 

[snoopy]

Why does he want to use the "xyz" part?

 

[DavidL]

XYZ is not a brand of lens it is a brand of optometrist.....he wishes to sell lenses only.

If he sells anything that is not a product of XYZ, he is taking a risk. It could be argued he is using the XYZ brand to sell competing goods

Even if XYZ don't actually have a lens product, it's in the same niche so other lenses would be seen as competitors.

I think...

 

[findtim]

been down this road before, what happens is the other company either lays down and dies on the subject or attacks, chances are they attack and it just ends up in lawyers making money, the worst case is the other company doesn't know until your mate spends all his money in development and THEN they attack which means he has to close down and loose what he's put in.

IF he has a good selling proposition then he doesn't need to go up against a trademarked name, most people who do this do not have a winning edge thus why they are trying to score off the established business.

he's heading for headaches and $$$$$$$$$$$$


tim

PS: if you want to PM me i could do some stealth research for you as one of my businesses is in the optometrist industry so i have contacts i can phone who tell me whatever i want to know. i'm www.optometristwebsites.com.au to be above board.

 

[Cooper Mills DomainLawyer]

If he only sells XYZ lenses and makes clear his relationship (or lack thereof) with XYZ, he could be OK wouldn't he, Erhan?

from an auDRP point of view alone these are the most important authorities if a brand name is used:

The BMW Case - 3 member WIPO panel; and
The GM Case single member panel;

There are other considerations to bear in mind as well.