guide We Bought A Trademarked Domain - Here Is WHAT Happened...

Omar Negron · Sep 25, 2015

A few years ago, we use to dabble in a lot of things when it came to the internet. Anything you can name, we probably tried it. To be frank, we sucked at most things. Mainly because it’s hard to get really good at something when all you are doing is jumping from one new thing to another (which pretty much sums up our first several years online).

I went through my mail (physical mail not email) and received a letter from the bank’s headquarters. It had pretty specific instructions. They wanted us to let go of the domain name and never use it again.

Did you know it is very stupid to buy a domain name that is trademarked? Well, we didn’t. Check out our story.

Read our story here

Pandemic · Sep 25, 2015

Good story. During the .mobi boom I cyber squatted ever major bank, and a good 6 or 7 of them came after me for TM issues. The filed the dispute with Icann and I lost every time. Despite what people think, there is no prosecution, legal fees, etc.... People around here panic very fast. Even as you did, put a letter in front of the name and told them to shove it, around here if you mention that, you will hear "delete the name... you will be prosecuted.... jail, thousands in legal fees", etc.... really crazy stuff. Like I said, I inadvertantly went through the process a a good half dozen times. I bought 1ipod.com, and god did I get an earfull around here, lol. That name is far from being a TM issue. Further, there are 200 names on sedo with Ipod in it and people are bidding on them. I personally think people make way too big of a deal over TM issues. Large entities rarely pursue TM's these days as a lot of the issues were resolved years ago after they got the names they wanted. I'm not the least bit concerned about Apple wanting 1ipod.com. It's not that good of a name and they would never want it.

Anyway, good story.

snowbird · Sep 25, 2015

Sorry to hear of what you had to go through. Many new domainers make the mistake of not fully understanding what they are getting into when it comes to trademarked names. For anyone who is interested, NamePros actually has a thread in their legal section that goes more in depth about trademark names. You can find it here:

https://www.namepros.com/threads/consequences-of-registering-trademark-domains.778594/

Pandemic · Sep 25, 2015

TM's are a definite issue when a new extension comes out, and people race to purchase an exact name of a TM. Now that's pretty dumb, and people really have no right to do that. Just take a similar name if you're intention is to market their product or to do CPC ads. These companies actually want you to market and sell their products as it's big business for them. They only want a name if it's a a match for a TM. Again, they probably want you in fact selling their products for the most part. It's been a very long time since I've personally even heard of TM issues these days. We really need to keep all of this in perspective. Hell, the 4 letter acronyms everybody buys could be a TM issue if it's an exact match for a co, if you want to get technical and fearful about everything.

Bottom line is, in the worst case scenario, you will pay no legal fees, no jail time (lol), and face no prosecution. Worst case is you simply lose the domain in a dispute.

When a new extension comes out, just don't be stupid and cyber squat an exact TM, or you will lose the domain - and deserve it.

Manik · Sep 25, 2015

It's good to know that common man wins for once. Inspiring story!

1NiteStand · Sep 25, 2015

Thanks fo the info dawg

Pandemic · Sep 25, 2015

The Chinese apparently don't care whatsoever about TM's. I've been researching it.

Ya.... I was a bad boy. I just had to buy Facebook.co in Chinese. 脸书.co

What can I say .... :D

cocaseco · Sep 25, 2015

I would add that you also need to at least be aware of foreign trademarks. With the world becoming more connected, a large company with a TM in Germany might put pressure on you in the US for a German TM violation. While they may not have a case, they might put you out of business in legal costs trying to prove it. One good resource for a comprehensive check is the World Intellectual Property Organization (WIPO). They aggregate TM's from most, if not all, countries. If you pass the TM check here you are most de3finitly clear of TM issues on that day. The link I put up is to the English language page, but it is also available in Spanish and French.

cocaseco · Sep 25, 2015

Pandemic said:
The Chinese apparently don't care whatsoever about TM's. I've been researching it.

Ya.... I was a bad boy. I just had to buy Facebook.co in Chinese. 脸书.co

What can I say .... :D

Your example has nothing to do with the Chinese people or government. It is just a matter of time until you get a letter regarding that domain. Besides, Facebook isn't even available in China. You should consider dropping it before you get made into an example.

Pandemic · Sep 25, 2015

You're absolutely right. They should buy that domain off me and start their own FB.

Omar Negron · Sep 25, 2015

Pandemic said:
Good story. During the .mobi boom I cyber squatted ever major bank, and a good 6 or 7 of them came after me for TM issues. The filed the dispute with Icann and I lost every time. Despite what people think, there is no prosecution, legal fees, etc.... People around here panic very fast. Even as you did, put a letter in front of the name and told them to shove it, around here if you mention that, you will hear "delete the name... you will be prosecuted.... jail, thousands in legal fees", etc.... really crazy stuff. Like I said, I inadvertantly went through the process a a good half dozen times. I bought 1ipod.com, and god did I get an earfull around here, lol. That name is far from being a TM issue. Further, there are 200 names on sedo with Ipod in it and people are bidding on them. I personally think people make way too big of a deal over TM issues. Large entities rarely pursue TM's these days as a lot of the issues were resolved years ago after they got the names they wanted. I'm not the least bit concerned about Apple wanting 1ipod.com. It's not that good of a name and they would never want it.

Anyway, good story.

Glad you liked it.

I understand your point and it's possible to fall under the radar but I wouldn't suggest it. It is NOT worth the hassle. Their our other opportunities out there to build a business with domain names. These big companies have the $$$ to take anyone they want to court, so I suggest staying away from ANYTHING you think may be pushing the trademark issue.

snowbird said:
Sorry to hear of what you had to go through. Many new domainers make the mistake of not fully understanding what they are getting into when it comes to trademarked names. For anyone who is interested, NamePros actually has a thread in their legal section that goes more in depth about trademark names. You can find it here:

https://www.namepros.com/threads/consequences-of-registering-trademark-domains.778594/

It's all good. Don't be sorry!

This was a time when we actually weren't focused on domains but on building websites for SEO purposes...either way, lesson learned.

Pandemic said:
TM's are a definite issue when a new extension comes out, and people race to purchase an exact name of a TM. Now that's pretty dumb, and people really have no right to do that. Just take a similar name if you're intention is to market their product or to do CPC ads. These companies actually want you to market and sell their products as it's big business for them. They only want a name if it's a a match for a TM. Again, they probably want you in fact selling their products for the most part. It's been a very long time since I've personally even heard of TM issues these days. We really need to keep all of this in perspective. Hell, the 4 letter acronyms everybody buys could be a TM issue if it's an exact match for a co, if you want to get technical and fearful about everything.

Bottom line is, in the worst case scenario, you will pay no legal fees, no jail time (lol), and face no prosecution. Worst case is you simply lose the domain in a dispute.

When a new extension comes out, just don't be stupid and cyber squat an exact TM, or you will lose the domain - and deserve it.

Yeah I get you. You make valid points.

I've heard similar things in regards to 4 character domains. It's interesting but our strategy is to just stay away from anything that is obviously TM infringing.

tweetsgonewild said:
It's good to know that common man wins for once. Inspiring story!

Thanks!

Well, I guess we lost the first battle but we won the war? lol...

1NiteStand said:
Thanks fo the info dawg

You're welcome. Glad ya liked it!

Omar Negron · Sep 25, 2015

Pandemic said:
The Chinese apparently don't care whatsoever about TM's. I've been researching it.

Ya.... I was a bad boy. I just had to buy Facebook.co in Chinese. 脸书.co

What can I say .... :D

Living on the edge!!!!! lol

cocaseco said:
I would add that you also need to at least be aware of foreign trademarks. With the world becoming more connected, a large company with a TM in Germany might put pressure on you in the US for a German TM violation. While they may not have a case, they might put you out of business in legal costs trying to prove it. One good resource for a comprehensive check is the World Intellectual Property Organization (WIPO). They aggregate TM's from most, if not all, countries. If you pass the TM check here you are most de3finitly clear of TM issues on that day. The link I put up is to the English language page, but it is also available in Spanish and French.

Thanks for the info!

Pandemic said:
You're absolutely right. They should buy that domain off me and start their own FB.

hahahaha

Pandemic · Sep 25, 2015

Lol ... ya I got a kick out of that too. Who needs FB in the U.S. when they can start there own now in China, and for only 50k. Can't beat it! I'm going to track the hits to my new site for selling Chinese domains to see what happens. Welcome to the new FB site in China, but unfortunately I'm only selling domains onit. Hell, I should build an FB forum on the name. (Facebook.co in Chinese) http://www.臉書.co And because I feel bad for them, so I also bought twitter.co. After all, what's China without Twitter? It's all theirs now!

Pandemic · Sep 25, 2015

Had to fix the link, but FB in China is now up!

Pandemic · Sep 25, 2015

I was looking at the largest companies in China, and all of the extensions are taken for those companies in Chinese. Either China isn't that savvy on the internet, or they don't care about TM related issues. If you piss off the Chinese though, they're liable to arrest you. This is all still new ground though for them.

Pandemic · Sep 25, 2015

And so it begins.... of course I'm jumping into the Chinese market buying domains, and using Chinese writing and symbols, and it is probably uncharted territory, so we will learn this one together. I may have to hit the legal forum on what just happened. Keep in mind I don't speak a lick of Chinese and I've been using the google translator to translate words, and then I buy the domain on Godaddy.

Anyway, I just got a call from a guy in China just now upset about my domain buyhomes.biz (in Chinese), and he asked for my license number. I advised we don't need a license number in the U.S. He said he is sending me a legal notice.

What the hell is this guy talking about? Maybe he doesn't realize this is not communist China.

Willox Perez · Sep 27, 2015

Pandemic said:
And so it begins.... of course I'm jumping into the Chinese market buying domains, and using Chinese writing and symbols, and it is probably uncharted territory, so we will learn this one together. I may have to hit the legal forum on what just happened. Keep in mind I don't speak a lick of Chinese and I've been using the google translator to translate words, and then I buy the domain on Godaddy.

Anyway, I just got a call from a guy in China just now upset about my domain buyhomes.biz (in Chinese), and he asked for my license number. I advised we don't need a license number in the U.S. He said he is sending me a legal notice.

What the hell is this guy talking about? Maybe he doesn't realize this is not communist China.

Haha that is such an interesting approach keep us posted it how it goes. The fact that you have people upset and reaching out means they don't want you profiting from your methods. You definitely may be on to something here.

Trademarks are so tricky though. I just find it insane how companies now think they have the power to trademark common names. For example I was just reading about the name Bar.net and the legal battle won by the owner of Bart.org and Bart.gov

To me this is a general name and the only thing it reminds me of is the Simpsons Here is the post:

http://www.thedomains.com/2015/09/2...t-lost-in-udrp-to-owner-of-bart-org-bart-gov/.

- Will

Pandemic · Sep 27, 2015

The small folk don't have many rights when it comes to trademarks, big business and money. Icann Is a bully organization that caters to big business. I think in a lot of cases our rights to generic name have been taken from us. Fed government at it's finest.

In China, they don't recognize U.S. trademarks. Technically, since I own Youtube.com in Chinese, if someone in China buys that name, they're good to go.

http://www.cnn.com/2014/07/17/world/asia/china-trademark-squatters-penfolds/

Omar Negron · Sep 27, 2015

Pandemic said:
The small folk don't have many rights when it comes to trademarks, big business and money. Icann Is a bully organization that caters to big business. I think in a lot of cases our rights to generic name have been taken from us. Fed government at it's finest.

In China, they don't recognize U.S. trademarks. Technically, since I own Youtube.com in Chinese, if someone in China buys that name, they're good to go.

http://www.cnn.com/2014/07/17/world/asia/china-trademark-squatters-penfolds/

Interesting...

Thanks for the article!

Pandemic · Sep 27, 2015

No prob. Coca cola is still available in China for .co- 可口可乐.co. I'm terrible, lol. But you can get great rankings on Google using Chinese writing believe it or not. China is wide open. Definitely go with private registration if you accidentally squat a name. The U.S. will never fight with China over TM's. China doesn't listen to anyone.

What I do is go to Google translate here - https://translate.google.com/ And translate a word from English to Chinese. After I translate the word, I copy and paste it in the Godaddy search to see if it's available. The Chinese are huge on taking all of those new extensions that came out. It gives good insight on what the Chinese are buying.

guide We Bought A Trademarked Domain - Here Is WHAT Happened...

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