Consequences of Registering Trademark Domains

[snowbird]

It is great to see so many new members wanting to become involved in the NamePros community. Welcome to the world of domaining!

However, there seems to be some confusion among new members about whether or not it is ok to register domain names with trademarks in them.

The general quick answer here is NO, it is strongly advised that you do NOT register a domain with a trademark in it. The whole idea for a company to have their brand names trademarked is so they can protect their brand's reputation and profits.

While it may be possible to register domain names with "Microsoft®" or "iPad®" in them, it is important for you to know that domain registrars and registration providers do not police what you register. It is up to the person registering the domain name to know which domain names are ok to register.


Consequences:
If you register a domain name with a trademark in it, you will be faced with the risk of possibly losing that domain name to the company who owns the trademark through WIPO arbitration initiated by the trademark holder. If the trademark holder also believes you have been profiting off their brand name or have effected their reputation in any way, a lawsuit may also be filed to reclaim lost profits and for recovery from damages you may have caused their company.

The only exception to these consequences would be if you registered that same trademarked name for use in a different industry. In that situation, the name is expected not to be confusingly similar to the other company's trademark. For example a trademark can be registered for a computer software company, and by someone else who may be utilizing that same trademarked name to sell swim wear. As long as it is clear that the name is being used for non confusingly similar industries, you should be alright. This typically works out for companies who have lower key trademarks and are not as well known on a national or global level.

If you currently hold a domain with a trademark in it and you do not meet that special circumstance, it is advised that you notify your registrar/registration provider as soon as possible to inform them that you would like to drop the domain.

Howcome other people are registering domains with trademarks in it?
If those other people jump off a bridge, are you going to do it too? Those who decide to register these domains may not know the consequences of doing so and will find out over time what might happen. OR, it is possible these people are already aware of the consequences and are comfortable with the possibility of being caught.

But just be warned, this is an at your own risk type of thing and continuing to register these names will only promote a bad reputation for all the domainers who are playing by the rules.





The information in this post reflects the opinions of a NamePros member and is not to be considered actual legal advice.
All registered trademarks in this post are the property of their respective owners.

 

[[email protected]]

Hello everyone, I am a newbie to your program so please cut a little slack. I registered over 1000 names back in the mid 90's and I sold quite a few of them, still retain about 450. Anyway I have gone through quite a lot of Trademark suits, lost some and won some, however the WIN record far outweighs the LOSS record when it comes to dollars. One particular trademark UDRP case, which I insisted on a three person panel was me against a billion dollar company, I won. Anyway I would like to ask someone, what if the situation was reversed, that someone went through a trademark (TESS) and registered a name and then filed a UDRP against the domain holder albeit ha the domain holder had it registered before the trademark was filed. My question is who do you think would win?
Cheers

Nic

 

[arend]

Thanks fo this thread. I was flirting with hand regging a risky domain name TM wise. for a couple of weeks now. I have now deciced to not register it and forget about it. Not worth the stress.

Thanks for original post. Much appreciated.

 

[andylocus]

Hi all,

Any guidance would be very much appreciated?

Scenario:

Sandwich company in London for eg. hamsandwiches.com own the .com and the .co.uk

This company is not a registered trademark or recognised brand but is an established company in London.

Therefore can I register the .london domain and sell it to them?

Many thanks guys I would love to know the limitations of this approach.

Cheers

 

[buyselldoms]

Why would they buy it off you?

Is it a non-branded good they sell or their business name?

They don't need a registered trademark... if they are established and been trading under a certain name, they are protected.

Rule of thumb... best to avoid this approach, if they don't take action against you, you will have it until it expires, no one else will probably be interested in it and will just be draining your money by registering such domains and renewing them every year.

 

[andylocus]

Thanku buyselldoms

It's their business name yes.

I am trying to rule out all the questions that every potential domainer must have at first!

They are established yes however with the new .london web addresses coming out surely these are profitable purely on the basis that if a company has the .com and the .co.uk then why wouldn't they want the .london

However I guess you have answered my question with regard to registered trademark or brand. If established company then protected?

Many thanks

 

[buyselldoms]

Yeah, a registered trademark means nothing if not been trading under; whereas a non-registered trademark means a lot if traded under. In these disputes there are normally factors of geography, duration of trading and extent of trading. In your case, the .london limits the geographical area, which makes it stronger for them.

 

[andylocus]

Roger that many thanks

 

[DomainVP]

I would like to ask someone, what if the situation was reversed, that someone went through a trademark (TESS) and registered a name and then filed a UDRP against the domain holder albeit ha the domain holder had it registered before the trademark was filed. My question is who do you think would win?

A trademark owner must show that they registered the trademark BEFORE the domain was registered. Otherwise there is no rightful claim on the domain, unless the respondent does not respond to the WIPO. In that case, the panels have been known to award the domain to the trademark holder.

You MUST respond to any WIPO/UDRP cases, and respond with vigilance.

The easy gist of the WIPO are three questions:
#1) Does your name violate a trade mark?
#2) Do you have the right to fairly use the name?
#3) Did you register the name in bad faith?

The WIPO panel must rule against you in all three questions in order to have a domain released to the complainant.

If you own a generic domain that has no copyright/trademark in your country, and you have a fair use right to ownership, and you clearly have displayed that didn't register it to sell it to them or for any other malicious reason... then you are okay and should be able to defeat any WIPO/UDRP.

Search for WIPO cases and read the panels decisions.

Owning the domain in hopes for a buyer is NOT fair use. So many respondents respond with, "it's a popular phrase and is an investment for later resale or development." - No

You must show that you have plans or an idea that you will actively use the name for. Be specific.

FInally, if there is no trademark found in question #1 than then usually question #3 goes right out the window. You cannot commit 'bad faith' if there is no trademark involved. Unless you use for the blackmail approach, then you have just put yourself in a bad situation.

I hope this helps, cheers!

 

[Emerald100]

What do you think about this hypothetical example? Trademark (hypothetically) is registered as 'the original Houston cookie', and someone buys a domain 'Houston cookie', will that be an issue?

 

[Dave_Z]

What do you think about this hypothetical example? Trademark (hypothetically) is registered as 'the original Houston cookie', and someone buys a domain 'Houston cookie', will that be an issue?

It can be an issue. Whether or not it will be will depend on factors too many to mention in one post.

 

[Emerald100]

ok, thank you

 

[gatekeeper72]

I'm curious, torrent is a trademarked name, would naming a domain somethingtorrent be an infringement?

also, I recently got a domain named dropboxie. Would that invite trouble from dropbox? (also trademarked)

so, if a name is found at uspto.gov as LIVE and it's a part of any of our domain names, it is against the law?

Just want to make sure 'cause it seems I have a lot of trademarked domains registered :S

Thanks for your answer,

thing is that what I really asked was, if a trademarked name is contained in a domain name -like the examples I gave earlier- would that be against the law?

dropboxie contains the word dropbox (which is in the trademark database)
somethingtorrent contains the word torrent (which is also in the trademark database)
..and so on

I'm sorry if I wasn't clear before

I have the same exact questions about this..Someone, please advise. Thank you!

 

[gatekeeper72]

For example...If you own "Logic Diagram dot com for instance, and the word "Logic" is TM by almost 6,000 people, where do you draw the line at If it's against the trademark laws? Could you get a UDRP on just the one word if your only buying to resell the domain, but didn't know it was trademarked because it's such a generic word? Also, if there is 2 generic words in your domain that hold a TM, Like EllegantLingerieBuying for example, and "Lingerie buying" is trademarked? Does it have to be axact, or can the people that hold the trademark, file a UDRP on just those 2 words, or one word, or even the letter "i" in a word? Please explain...If so, then we're all screwed if we don't build sites, because i think every word in the dictionary, and some non-dictionary words even, are all trademarked.

 

[DomainVP]

You really just have to do your own research on this and read the WIPO decisions. Take some time to look up WIPO or UDRP cases on Google and give them a read. After a few days you will be an expert.

 

[gatekeeper72]

You really just have to do your own research on this and read the WIPO decisions. Take some time to look up WIPO or UDRP cases on Google and give them a read. After a few days you will be an expert.

I took pretty much all of yesterday reading up on this, and reading the WIPO's and the UDRP's, and I feel as though it's extremely confusing with very fine lines, and a lot of risk. So many generic words, and phrases have TM's...I Wish it was more defined, and cut and dry, and knew the answers to my question. I searched long and hard all day for my questions getting only bleak answers about it..It's hard to look things up because if I put in one of my domains to search for as in a 2 words domain, it's not TM, but if I take one of those words, there are many. Or if I have a 3 word domain, 2 of those words might be trademarked, but not all 3. Where do you draw the line? Also, I noticed that some companies, with a very short name such as ebay for example tried to file a UDRP on a Chesapeakebay URL, and some others that had that name in it, in which they didn't win of course, but this shows me the highly potential risks involved. Almost makes me want to run to the hills. I want to be on the up and up with everything, and NOT considered a cybersquatter, because that's not what I'm about. I have no intentions on ruining a TM of someone else's business at all. I just want to help other businesses with the potential of helping them grow with the domains I have, and with branding. So does that mean I will have to go from just investing in domains to resell, to getting unlimited hosting, and building out fully blown sites, or mini sites, making sure that even the logo isn't even close, investing in a logo as well, and making sure the sites I build out are completely unrelated to anything and everything listed in the TM names? I have a 3 word domain that 2 of the words have a TM by almost 6,000 people...That's a LOT to read, and sift through...But, am I going to have to sell them that way, or???? I feel very stuck right now in not knowing what I'm going to do at this point. I wish someone could give me a more cut and dry answer..It seems like a tremendously grey area.
I already just deleted one of my domains yesterday, that didn't expire until next year, as I felt it may have been trademarked b/c one of the words in the domain was. Not sure if it was, because it was a 2 word. Does both of the words have to be trademarked, or just the one? I learned that it is a very grey area on the flip side too, with ebay filing a UDRP on the name I mentioned above, and some others...
I am still VERY CONFUSED! Please, ANYONE, EVERYONE, help clear this up more for me....Or walk me through it like I'm 5...PLEASE! I don't want to have to give up just yet...But am not going to sell or buy at this point until I know things a bit more clearly.

 

[TheBlueprint]

great information. I have a friend that should have read this post, as he owns a few music artists names who are trademarked, and was worried about developing a blog (i.e LilWayneVideos.com or MileyCyrusLyrics.com)

 

[DomainVP]

So does that mean I will have to go from just investing in domains to resell, to getting unlimited hosting, and building out fully blown sites, or mini sites, making sure that even the logo isn't even close, investing in a logo as well, and making sure the sites I build out are completely unrelated to anything and everything listed in the TM names?

Pretty much.

 

[mreynolds]

I own a 5 letter domain that registered back in 2000. On 2012 I got an email offer for $95, I replied with counter offer $2900, they said they only want to pay $280 for it so the deal was off. Then last month they emailed me back with new offer $800 but I told them I decided to build a website on this domain. They told me that I can't do that because they now own the trademark on the name (they registered trademark in 2013). They are clearly don't want to pay more than $1k and I don't want to sell under $2k. What should I do now with the domain? I got a high offer from someone else but at the last minute they backed out because they found out there is a live trademark on that name.

 

[MARYJANEBLY]

I registered microsoftsupport.co.uk what do you all think? It has huge exact search

 

[King Leonidas]

I want to register a domain but the only difference is an ''S'' at the end.

My domain hypothetically is MetalDoors.com but there are two companies one in the USA and the other in europe both owners of the word mark ''MetalDoor''. The US based company has the type of mark ''SERVICE MARK'' and the second company as ''TRADEMARK'', which both are live until today.

What to do please?

 

[hicklemr]

nice written post glad to be here

 

[JudgeMind]

Someone on Facebook is trying to sell iphone.info, only a matter of time until they will be facing heavily backed lawyers

 

[KDN]

I think it all boils down to your purpose. I mean if you own 'buyiphones.com', have a well-designed shopping website and are open about it then I don't think you should worry too much about the trademark issue. What companies don't like is when you use their trademarks and just park the domain and leech off their potential traffic without getting something in return. Just my opinion. I would love to hear your thoughts.

 

[Hypersot]

I think it all boils down to your purpose. I mean if you own 'buyiphones.com', have a well-designed shopping website and are open about it then I don't think you should worry too much about the trademark issue. What companies don't like is when you use their trademarks and just park the domain and leech off their potential traffic without getting something in return. Just my opinion. I would love to hear your thoughts.

I believe someone needs to be a registered Apple reseller to be able to sell any Apple products.

Ofc I don't know how this works with domains that are for sale and *don't* show any TM ads but I'd avoid such domains if it was me since -I think- any mention of a TM name needs to be accompanied with permission from the company.

At least that is valid with an MS domain I used to have (msofficethemes). I made the mistake of registering it and then, after some research, I found out that even the MS in the name could lead me into trouble if I intended to sell it (ie. make money out of it).

 

[KDN]

Good points.

I just hope that someday clearer guidelines about trademark domains would be made.