Results 1 to 11 of 11
  1. #1
    Join Date
    Jun 2004
    Posts
    199

    domains: passing off

    There are many domains which use "vbulletin" keyword in them and are now owned by jelsoft

    Some of them are parked at ppc services, some of them are for sale, some are runing websites

    If someone tries to sell a domain generated with vbulletin keyword , does it cause any legal problems? is this passing off?

    nameprotect.com/cgi-bin/FREESearch/search.cgi?action=SEARCH&db=DOM&ss=vbulletin&imageField.x=10&imageField.y=10

    Kind Regards,
    Ferman

  2. #2
    Join Date
    Jul 2002
    Location
    Kuwait
    Posts
    10,573
    if its a trademark then it might have issues
    Bashar Al-Abdulhadi - KuwaitNET Internet Services Serving customers since 1997
    Kuwait's First Webhosting and Domain Registration provider - an ICANN Accredited Registrar

    Twitter: Bashar Al-Abdulhadi

  3. #3
    Join Date
    Jun 2004
    Posts
    199
    here is what intellectual-property.gov.uk/std/resources/other_ip_rights/passing_off.htm says:

    Passing off:

    Where a business has registered a trade mark and another business sells goods or provides services under the same trade mark without permission from the first business, there may be an infringement of the registered trade mark. The actions of the second business could be a type of unfair competition where it benefits from the reputation of the first business associated with the registered trade mark.

    The law of passing off concerns unfair competition more generally in situations where there does not need to be a registered trade mark or any other IP right. Where a second business does something so that the public is misled into thinking that the activity is associated with a first business and as a result the first business suffers some damage, then it may be possible for the first business to sue the second business for passing off.

    One area where passing off might apply is where a second person uses an unregistered trade mark normally used by a first person and in so doing passes off, or represents, goods or services in such away that the public is deceived into thinking the goods or services are being offered by the first person.

    However, this area of law, which arises out of the common law rather than statute, is quite complicated so, if you feel that another business is trading off your reputation in any way, you might want to seek legal advice to see whether you could sue for passing off.

  4. #4
    Join Date
    Jun 2004
    Posts
    199
    There is no trademark for vbulletin

    "passing off" issue totally depends on the way of usage, if you put an explanation that your site is not directly affiliated with jelsoft/vbulletin... then there will be no problem i think

    US
    uspto.gov
    EU
    oami.eu.int/en/default.htm
    UK
    patent.gov.uk

    jelsoft is a trademark but vbulletin is not
    microsot is a trademark but windows is not
    and if you start a website with a domain like windowssoftware dot com or windowsoperatinsystem dot com... do you think it causes a problem? i do not think so.
    Last edited by Ferman; 04-14-2005 at 03:33 AM.

  5. #5
    Vbulletin are usually very lenient with people using “vbulletin” in there domains. Countless vbulletin skin, hacks and fan sites have started poping up.

    You shouldn’t have a problem.

  6. #6
    Join Date
    Jul 2002
    Location
    Kuwait
    Posts
    10,573
    windows means man window and isn't a makeup word like vbulletin
    answers.com/vbulletin
    answers.com/windows

    although they are saying windows is a trademark @ http://www.answers.com/topic/microsoft-windows&method=6

    weird!
    Bashar Al-Abdulhadi - KuwaitNET Internet Services Serving customers since 1997
    Kuwait's First Webhosting and Domain Registration provider - an ICANN Accredited Registrar

    Twitter: Bashar Al-Abdulhadi

  7. #7
    Join Date
    Jun 2004
    Posts
    199
    I got my domain management company's legal department to run a trademark
    search for vbulletinforum.com and nothing came up.

    i have found many domains/websites running which have "vbulletin" keyword in it. vbulletinforums/vbulletinhosting/vbulletinhacks/vbulletinhelp/vbulletinboard...

    nameprotect.com/cgi-bin/FREESearch/search.cgi?action=SEARCH&db=DOM&ss=vbulletin&imageField.x=10&imageField.y=10

    some sites are running for years without any problem: talkvbulletin.com vbulletin-fans.com

    there is just one thing to be careful. it is called "passing off"
    "passing off" means you start business to sell forum software, you name it "vbulletin forum", offcourse do not copy others work and business model. but it is not the case of this domain sale, it is about what you will do with this domain, if you start a website/forum to talk about vbulletin related subject there will be no problem.

    passing off totally depends on the way of usage for the domain/website

    if you put an explanation/disclamier that your website is not directly affiliated with jelsoft/vbulletin... then there will be no problem. check besiktas.com , it is the name of a sports club in Turkey and they kindly say click here to enter official besiktas sports club site or click here to enter besiktas fan site...

    ps: trademark search databases to check it yourself
    US
    uspto.gov
    EU
    oami.eu.int/en/default.htm
    UK
    patent.gov.uk


    by the way here is what i have found about passing off issue and bad faith
    http://arbiter.wipo.int/domains/deci...2003-0035.html
    check decision:
    "The Complainant has not established that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph "...

    you see? it all depends on your usage. domain is safe to use and there is no trademark violation

  8. #8
    Join Date
    Jul 2002
    Location
    Kuwait
    Posts
    10,573
    seems depends on the name itself

    good luck
    Bashar Al-Abdulhadi - KuwaitNET Internet Services Serving customers since 1997
    Kuwait's First Webhosting and Domain Registration provider - an ICANN Accredited Registrar

    Twitter: Bashar Al-Abdulhadi

  9. #9
    Just don't forget at least 2 things, Ferman:

    1. One doesn't need a registered trademark if they can prove
    common law.

    2. One doesn't need a US or EU-registered trademark if they can
    prove they have one from an unknown and secluded country.

    And you've been posting this in various forums, too.

  10. #10
    Join Date
    Jun 2004
    Posts
    199
    i aggree with you davezan
    that is what i am trying to say
    general rule:
    what you do is important
    but how you do it is more important
    yep, i posted this to multiple forums to discuss it with different people, different ideas make theory be much more closer to reality

  11. #11
    Join Date
    Mar 2002
    Location
    Netherlands
    Posts
    12
    Originally posted by Ferman
    I got my domain management company's legal department to run a trademark
    search for vbulletinforum.com and nothing came up.

    i have found many domains/websites running which have "vbulletin" keyword in it. vbulletinforums/vbulletinhosting/vbulletinhacks/vbulletinhelp/vbulletinboard...

    nameprotect.com/cgi-bin/FREESearch/search.cgi?action=SEARCH&db=DOM&ss=vbulletin&imageField.x=10&imageField.y=10

    some sites are running for years without any problem: talkvbulletin.com vbulletin-fans.com

    there is just one thing to be careful. it is called "passing off"
    "passing off" means you start business to sell forum software, you name it "vbulletin forum", offcourse do not copy others work and business model. but it is not the case of this domain sale, it is about what you will do with this domain, if you start a website/forum to talk about vbulletin related subject there will be no problem.

    passing off totally depends on the way of usage for the domain/website

    if you put an explanation/disclamier that your website is not directly affiliated with jelsoft/vbulletin... then there will be no problem. check besiktas.com , it is the name of a sports club in Turkey and they kindly say click here to enter official besiktas sports club site or click here to enter besiktas fan site...

    ps: trademark search databases to check it yourself
    US
    uspto.gov
    EU
    oami.eu.int/en/default.htm
    UK
    patent.gov.uk


    by the way here is what i have found about passing off issue and bad faith
    http://arbiter.wipo.int/domains/deci...2003-0035.html
    check decision:
    "The Complainant has not established that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph "...

    you see? it all depends on your usage. domain is safe to use and there is no trademark violation

    You might want to notice the (tm) icon besides the name 'vBulletin' in the logos on vBulletin.com.

    And before you use my domain name vBulletin-Fans.com in conversations like these you might want to check up on it first. Ever since I registered the domain names I own with 'vbulletin' in them I have a written agreement about using them (and how) with Jelsoft.

    Other domains with vBulletin in them might have done the same, or might not have. If Jelsoft feels, and can, protect their company and business names if they want to. If anybody has any questions about their own domain name (with vbulletin in it), they can contact Jelsoft through sales.
    The vBulletin Fans Network
    former Jelsoft Staff Member
    DeskPro Team Member

Posting Permissions

  • You may not post new threads
  • You may not post replies
  • You may not post attachments
  • You may not edit your posts
  •