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Ely
Ely, Counselor at Law
Category: Intellectual Property Law
Satisfied Customers: 99983
Experience:  Licensed attorney in private practice.
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Can buying a domain name with the common word "luxury" in it

Customer Question

can buying a domain name with the common word "luxury" in it cause a trademark violation with a company who does not have exclusive rights in their mark as follows: NO CLAIM IS MADE TO THE EXCLUSI VE RIGHT TO USE "LUXURY PROPERTIES", APART FROM THE MARK AS SHOWN.
JA: Is the trademark federally registered?
Customer: yes
JA: Have you talked to a local attorney? Has anything been filed in court?
Customer: no we have just received a demand to shut down the website that uses the word luxury in their domain name.
JA: Anything else you want the lawyer to know before I connect you?
Customer: I do have the trademarks as they were sent with their demand email.
Submitted: 27 days ago.
Category: Intellectual Property Law
Expert:  Ely replied 27 days ago.

Hello and welcome to JustAnswer. Please note: This is general information for educational purposes only and is not legal advice. No specific course of action is proposed herein, and no attorney-client relationship or privilege is formed by speaking to an expert on this site. By continuing, you confirm that you understand and agree to these terms.

Simply having a domain name with the word "luxury" in it is not a violation, since this is a generic term. So no, this would not be an issue. You cannot copyright/trademark simply one word.

However, if you mean to say that your domain name will incorporate the whole name of the company, then this is different - if so, please reply and explain in detail.

I hope this helps and clarifies. Please use the SEND or REPLY button to keep chatting, or please RATE when finished. You may always ask follow ups at no charge after rating. Kindly rate my answer as one of TOP THREE FACES/STARS and then SUBMIT, as this is how experts get credit for our time. Rating my answer the bottom two faces/stars (or failing to submit the rating) does not give me credit and reflects poorly on me, even if my answer is correct. I work very hard to formulate an informative and honest answer for you; please reciprocate my good faith with a positive rating.

Customer: replied 27 days ago.
The domain name does contain their entire company name, but it is not exact and has dashes included. The domain name is: http://tahoe-luxury-properties.com/
and the company complaining is: ********* Their mark explicity states on it:
NO CLAIM IS MADE TO THE EXCLUSI VE RIGHT TO USE "LUXURY PROPERTIES", APART FROM THE MARK AS SHOWN.
I interpret that to fall within this:
A disclaimer is a statement that you include in your application to indicate that you do not claim exclusive rights to an unregistrable portion of your mark. For example, if you sell shirts and your mark includes the generic word "SHIRTS," you could not object to someone else also using the word “SHIRTS” as part of his/her mark. The word is still part of both marks, but no one is claiming exclusive rights in that word, because it is an 'unregistrable' component of an overall mark. (See below for typical examples of unregistrable matter that must be disclaimed.)
A disclaimer does not physically remove the unregistrable portion from your mark or affect the appearance of your mark or the way you use it. It is merely a statement that the disclaimed words or designs need to be freely available for other businesses to use in marketing comparable goods or services.
Expert:  Ely replied 27 days ago.
Okay, thank you. First, we need to put down some definitions.
TRADEMARKS - Mostly phrases. A trademark is any word, name, slogan, design, or symbol used in commerce to identify a particular product and distinguish it from others. Trademarks are filed with the US Patent and Trademark Office.
COPYRIGHT - Applies more to written texts and works of art. Copyrighted images are filed with the U.S. Copyright Office. They work very much like trademarks.
LOGOS can often fall under either/both.
So what you have here is that they copyright/trademark that phrase, and then you come along and use that phrase in your website. It is not the name of your company (right), but simply the domain.
If so, then there is NO CLEAR ANSWER unless they challenge it. The Court would have to decide if one party pushes on it, depending but not limited to the following subjective factors:
-who copyrighted/trademarked it first
-who actually began using it first
-what kind of industry one uses it in and whether or not the other party is in another industry, or, in direct or indirect competition with the first party
-whether any party was malicious in their actions
-whether the phrase of the first party confuses/dilutes the other party's claim
And so on.
So to go back to your original question, which can essentially be boiled down to:
Can they sue me for that domain name?
They can try, yes, but they may not be successful. It all depends on those factors listed above. But I will not lie and state that this is a dangerous game, because you'd be "edging them on" to sue, unless they do not see this as a threat and/or dilution of their trademark.
Please note: If I tell you simply what you wish to hear, this would be unfair to you. I need to be honest with you and sometimes this means providing information that is not optimal. Negative ratings are reserved for experts who are rude or for erroneous information. Please rate me on the quality of my information; do not punish me for my honesty.
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Customer: replied 27 days ago.
I guess I am not sure what to do. They have asked us to take down the website. I am at a very large loss of wages as I designed the site and have forecasted additional compensation from the owner in the amounts of up to $6500.
The other thing that comes into play is that there are several other sites that would be in this same violation as they have keywords all throughout their sites and in the titles that are very similar to what we have done. Let me know what you think?
We did not pick the domain name to compete with them as they are primarily in the vacation rental business and we are in the luxury real estate business.
Is there something I can do to respond to their demand which is:
"Please be advised that ********* a registered trademark for our company, per the attached certificates, and any use of this name is ***** ***** on this registered mark. We respectfully ***** ***** you immediately take down all direct references to our company name in your advertising and on your site."
Expert:  Ely replied 27 days ago.
Thank you for your reply.
I guess I am not sure what to do. They have asked us to take down the website. I am at a very large loss of wages as I designed the site and have forecasted additional compensation from the owner in the amounts of up to $6500.
I understand. Well you did not tell me they send a takedown demand. So they ARE pushing. That means that they may sue. I am afraid I cannot make this decision for you. Either you change the name of the domain, or, call their bluff. If you call their bluff, the Court will decide if they file suit.
The other thing that comes into play is that there are several other sites that would be in this same violation as they have keywords all throughout their sites and in the titles that are very similar to what we have done. Let me know what you think?
They likely have received similar letters. Regardless, what someone in your situation can do is use this to your advantage to argue that the verbiage in question is DILUTED ENOUGH to the point that is is generic, and your website does not really violate their trademark. But - that is if you call their bluff, and that is for the Court to decide.
We did not pick the domain name to compete with them as they are primarily in the vacation rental business and we are in the luxury real estate business.
Well... both are in real estate. So this goes against you.
Is there something I can do to respond to their demand which is:
"Please be advised that "Tahoe Luxury Properties" a registered trademark for our company, per the attached certificates, and any use of this name is ***** ***** on this registered mark. We respectfully ***** ***** you immediately take down all direct references to our company name in your advertising and on your site."

You mean that if they use your registered trademark? Sure. You can make a cross demand too.
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Customer: replied 27 days ago.
From my research I have gotten "Many domain names -- for instance, coffee.com, drugs.com and business.com -- are potentially powerful domain names, but they're generic. That is, they describe whole categories of products or services. Generic terms can never be trademarks."
Customer: replied 27 days ago.
that is explicitly stated on their trademark. Did you see the attachment that I sent. I attach it again.
Expert:  Ely replied 27 days ago.
From my research I have gotten "Many domain names -- for instance, coffee.com, drugs.com and business.com -- are potentially powerful domain names, but they're generic. That is, they describe whole categories of products or services. Generic terms can never be trademarks."
Right - which is what we are talking about. However, he did trademark those "string" of words, so it may or may not count as generic anymore.
I did see the attachment. However, my answer stands as is, since this may or may not be generic at this time.
Gentle Reminder: Please, use REPLY or SEND button to keep chatting, or RATE POSITIVELY and SUBMIT your rating when we are finished. You may always ask follow ups at no charge after rating.
Customer: replied 27 days ago.
Well how is this new website singled out from all the other websites that use ************ in any variety of ways? My goal is to find a way to keep the site up as am out a lot of money if I lose it. Then I want to be able to correctly respond to their email demand to take it down. Is an email really a demand? Doesn't something like that have to be done by mail or hand delivery?
Expert:  Ely replied 27 days ago.
I do not know why/how they have singled out you. Perhaps they analyzed web traffic and saw that many of its customers were pulling you up when typing in key words for their company. We do not know.
An email is a demand, yes. While certified letters are more common, sometimes it is easier to get attention via an email. Many law firms will send both an email and a letter so the letter may be in the mail, still.
There is no silver bullet here, I am sorry to say. EITHER YOU:
1) Do not respond at all, or respond but decline their demands, in which case you challenge them to file suit and they MAY or MAY NOT. If they do, then the Court decides based on what we had discussed; or
2) You agree and take down.
Note - an aggressive reply (by an attorney) threatening to COUNTER SUE them if they dare do anything may be enough to scare them away, but we do not know.
Again, I wish I had better news.
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Customer: replied 27 days ago.
Can I use the list of the other sites using this phrase as some form of response? Also, can you write an email in response to their demand?
Expert:  Ely replied 27 days ago.
this can be included in the response. But you know, their attorney may disregard your response because they know that if you do not have counsel, there is a chance that you may try to defend this yourself, which means that they'd have an easier time winning. Using an attorney is better for the response.
I am sorry, but experts cannot draft legal documents for customers.
Gentle Reminder: Please, use REPLY or SEND button to keep chatting, or RATE POSITIVELY and SUBMIT your rating when we are finished. You may always ask follow ups at no charge after rating.
Expert:  Ely replied 26 days ago.
Hello again. This is a courtesy check in to see if you needed anything else in regards ***** ***** question because you never responded or replied positively. I am simply touching base. Let me know. Thanks!

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