Trademark Question

Redrum · May 16, 2016

Hi everyone!!

If there's a topic that confuses me in domaining, that is Trademark issues. I've been reading about it and even listening to an interesting podcast from DS, and now i think I got a global idea on it. However, when I try to wonder about practical cases I realise I doubt about everything. Here's an example:

Lets say a Company "A" had its website built with "companyA.us" domain because "comapanyA.com" was unavailable at that moment. Then, someone finds the .com domain in GD closeouts, buys it and tries to sell it to Company A.

Would this case be considered a trademark fault?

This is only one of the questions that i come up with when thinking about trademark issues. If any of you have others, it would be useful to share them in here so we can discuss and maybe reach some answers.

Thanks a lot!

Redrum · May 16, 2016

biggie · May 16, 2016

Redrum said:
Then, someone finds the .com domain in GD closeouts, buys it and tries to sell it to Company A.

i'm not a lawyer:

but i'd look at it like.....

the intent of the .com owner, versus prior commercial website usage by .us owner

does the .us owner have a trademark for domain in relation to the goods/services they provide?

better to wait for them to contact you, in those situations

imo...

Redrum · May 16, 2016

Thanks @biggie !!

I think you're pointing out the clue with your question. What I'm thinking about is, for example, a local retailer that won't usually have a trademark for its business. That's how I come up with the question: although they don't have registed trademark, they are a registered business and, for me, their rights over a certain domain are not clear.

In the end I got your point, better be cautious in these situations. However, I think this case is usual and would be profitable if trademark issues were clearer for me.

Kate · May 16, 2016

Could be dangerous, especially if the name isn't generic, or couldn't be used by lots of other end users.

One thing to consider: maybe they settled on .us because they wanted to pay no more than regfee for a domain. Maybe the .com domain was registered and in use at the time, or it was registered but available for sale and they did not bother to inquire. Do some research.
Even assuming there are no TM issues (which I doubt), they might very well not be interested in paying a premium to acquire the name.
A good domain name should have more than one 'obvious' end user.

golan · May 16, 2016

If you can find totally different use to this domain, you'd probably be fine. Like, companyA is a cleaning company, and you build a site for a fictional veterinary called companyA, better yet in another country. So you are like a legit business having nothing to do with an original companyA. And only then you could try contacting them. Because their cleaning US trademark can't cover vet business in SAR for instance.

Redrum · May 17, 2016

Kate said:
A good domain name should have more than one 'obvious' end user.

golan said:
If you can find totally different use to this domain, you'd probably be fine.

Thanks @Kate! Thanks @golan!

So it's good to have a Plan B legal and profitwise.

Redrum · May 17, 2016

Looking around Zandibot's Blog I found some domains he posted at "Bang for your Buck #24" section that are subject to what he calls "upgrades".

Check HorizonAssociates.com or luxurybridge.com. Both now have an "upgradable" domain: HorizonAssociates.net and luxurybridge.com.au

I belive that those are exact cases of what I was talking about at the beggining. Maybe @Zandibot could shed a light on our discussion... yeahh... that'd be amazing

Michael · May 17, 2016

Practically every phrase that you would want to own as a domain is trademarked or used by one or more businesses somewhere. But a trademark only covers a particular set of goods and/or services. If you avoided all domains with a phrase that is trademarked or actively used by a business you'd probably never own any domains. A business can even establish common law rights to a phrase without registering it with the USPTO or similar body simply by using it and becoming known for it.

That said, infringement generally depends on your own actions. If you contact the business owner and try to sell him the domain, you're handing him a bad faith argument on a silver platter. If you park the domain and it shows links related to the goods and services of a company with a registered trademark (or even common law rights), you're also putting your domain at risk. I'm also not talking about obvious infringement with domains that include terms like Microsoft, but even then there is some grey area for gripe sites or fan sites so it depends on your actions.

Just going on NJ and grabbing a random domain from their home page, Stringrays.com, there are 86 live trademarks in TESS that come up for "stingrays" (many are singular - but adding an "s" is often still considered "confusingly similar" anyway). Does that mean you shouldn't own the domain? Definitely not, it is obviously generic. You could even own Apple.us without fear as long as you weren't showing links for something like Samsung, and you didn't approach Apple to buy it.

I think as a general rule of thumb, if the domain has meaning outside of one particular company, you're probably safe as long as you don't do something in bad faith (trying to sell them the domain, parking with links in their vertical, etc). I'm not a lawyer so take this with a grain of salt, trademark law is really complicated.

Redrum · May 18, 2016

Thanks @Michael !!

Basically, I understand that taking a conservative/passive approach to it is the correct way. As you say if we were strict about trademarks, everything in the world would be trademarked

Another question is, listing common domains (those that, formed by general words, if being very picky, could have a relationship with a trademark ) in SEDO, Afternic or Flippa would be considered bad faith?

I think it iwouldn´t mainly beacouse if it would, then all the entire domaining thing would be a tradmark issue

Michael · May 18, 2016

Redrum said:
Thanks @Michael !!

Basically, I understand that taking a conservative/passive approach to it is the correct way. As you say if we were strict about trademarks, everything in the world would be trademarked

Another question is, listing common domains (those that, formed by general words, if being very picky, could have a relationship with a trademark ) in SEDO, Afternic or Flippa would be considered bad faith?

I think it iwouldn´t mainly beacouse if it would, then all the entire domaining thing would be a tradmark issue

It depends on who is making that judgement call. If it is a defensible, generic phrase and someone tries to sue you in federal court based on the ACPA, and all you did was list it for sale on various marketplaces but you didn't approach a specific company, you'd most likely be fine having it listed as for sale.

If they file a UDRP it is kind of a coin toss, many panelists have found that selling generic domains is a legitimate interest, others have found it to be bad faith. Some have found that replying to a company that approaches you is the same as you approaching them as far as bad faith is concerned, others haven't. Unfortunately the UDRP isn't very consistent.

And it isn't always so clear-cut. Sometimes even having a registered trademark doesn't guarantee a win, I believe panelists have found that some trademarks are merely descriptive and don't have the same rights as those that are more of a brand. That's why you won't often see businesses building a brand on a generic term, because you can't defend it. Imagine Shoes.com selling shoes and trying to trademark the term "shoes" so only they could use it when selling shoes. Wouldn't be defensible, even if it did happen to slip through the cracks at the USPTO.

Again though, I'm no lawyer, and there are many people on the forum better qualified to talk about trademarks than I am. Hopefully some of them will chime in.

Carmen Emea · May 18, 2016

Thank you so much for such elaborated and complete answers @Michael, I'm new to the domaining world and they were of great help.

I had the same doubts that @Redrum had regarding 'upgrades' and now I know I have to be reeeally careful with trademarks and reaching potential end-users. Actually, it may not even be a good idea to have an 'domain upgrade strategy' in this business from what you explained.

Redrum · May 18, 2016

@Michael . I just discovered the UDPR topic thanks to your comment.

Doing some research I found that at WIPO's site everyone can have access to the resolution of all of UDPR cases. That's plenty of info to review and see what is normally considered trademark issue, bad faith purpose or any violation of ICANN policies.

From what i've read, UDPR is a mediation between domain owner and complainant person/company to reach an agreement or either a panel will make a decision about it.

What it is not clear for me is if it's a previous step to a conventional court process. I understand it is and that there are no other fines than the loss of the domain. Am I correct?

stevanlieberman · May 23, 2016

All trademark rights flow from use in commerce. Accordingly, if I use the word BLOB in assocition with selling car tires before the general public then I have trademark rights in the term BLOB whether or not I have filed to register the mark. On the other side, if I file to register the mark BLOB in association with tires and never use the mark to actually sell anything let alone tires, then I have no trademark rights to the term BLOB.

The UDRP arbitration process is appealable de novo (this means with all issues looked at as if the first time) in a court of competent jurisdiction. If the appeal is taken in the jurisdiction accepted by the complainant within ten (10) days then the domain name will not be transferred pending the appeal.

The idea behind the UDRP is to prevent cyber-squatting; re registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.

If you pick up a domain name that can only be used for that other company - re "SillyStringTechbowl.com" and you try to sell it to Silly String Tech Bowl, Inc or do not give it to them when they ask then you are cybersquatting. On the other hand, if you own dogs.com and a company Employment Dogs tries to take it from you then they are Reverse Domain Name hijackers. In other words the first domain clearly is associated with the first company. The second domain, dogs.com can be associated with untold numbers of companies and is a regular englisgh word besides. I hope this has helped.

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Redrum · May 25, 2016

thanks @stevanlieberman !!

Very helpful. As i've been reading these days it seems that cases of reverse domain hijacking are common.

In my opinion domainers or normal people are not protected in case a company acuses them falsely of cybersquating.

slader23 · May 25, 2016

What if the company has not trademarked their name?

DnEbook · May 26, 2016

There are different classes to trademarks, don't park a name with the one of the class holders ads on it

Jason.tv · May 26, 2016

This is called Cybersquatting if they have a trademark - https://en.wikipedia.org/wiki/Cybersquatting ; Intent to profit off someone else's mark is considered bad faith.

ah someone mentioned it above;

jberryhill · May 26, 2016

slader23 said:
What if the company has not trademarked their name?

This question, in its various forms, captures what is probably the biggest misconception that domainers have about trademarks.

Take another look at what Steve wrote:

"if I use the word BLOB in assocition with selling car tires before the general public then I have trademark rights in the term BLOB whether or not I have filed to register the mark"

In the US and other common law jurisdictions, the way that you "get" a trademark, is by using a word/phrase/symbol on goods/services in commerce as a distinctive indicator of the source or origin of the goods.

You don't have to "trademark your name" by performing any magic rituals or filing papers with any government office. If the relevant consuming public in the relevant market sees that mark on your goods and that mark distinguishes your goods from other goods in that market, such that consumers look at it and say, "Oh, yeah, it's that stuff", then you have a trademark for those goods. You don't have to go get one. You got one.

The key points there are (a) distinctiveness and (b) the relevant consumer and/or goods.

Looking at distinctiveness, the mark must be capable of performing the function of distinguishing the goods from those of others. To use my tired example, if I sell dog food, and I put "dog food" on the label then, no, that's not going to function as a trademark, because every other can of dog food says "dog food" on the label. It is the generic term for dog food, and cannot perform the trademark function of distinguishing the goods.

Now, if I sell shoes and I label them "dog food" brand shoes then, sure, as long as nobody else is selling "dog food" brand shoes, then I'm going to develop trademark rights in "dog food" for shoes.

And here we come to the other form of domainer question which, by now, makes me want to just load a gun and shoot myself in the head every time I see it:

Can "dog food" be a trademark?

Yes. Of course it can. Many of the most well-known trademarks are everyday words. "TIDE" for detergent. "APPLE" for computers. When you see the single elongated letter "O" on the hinge of a pair of sunglasses, and if you are a relevant consumer in the market for sunglasses, then you know you are looking at a pair of Oakley sunglasses - a single freaking letter can be a trademark.

mirecart · May 26, 2016

Hi All,

Having read this thread, I have a question relating to the .reviews domain sector.

I own a domain called brands.reviews and I've collected over 40 . reviews domains for some leading companies each of whom have trademarks. One of which contacted me directly via their legal consul within 72 hours of registering the domain in question. Given its a review site I'm building it doesn't conflict with their trademarks, just annoys the heck out of them.

My question to all is, if I place the business brands.reviews up for sale and include all the domains in question, am i breaching their trademark rights or just exercising my rights to sell a business name and its collective IP.

jberryhill · May 26, 2016

Carter, in that type of situation, a finder of fact would want to go deeper into the situation.

There are situations where people come up with a "legitimate" business plan of some sort which is just a fig leaf for attempting to extort trademark owners.

Now, (1) is the use, in some general sense, of a trademark as a nominative reference to identify what is clearly third party reviews of that product lawful? Well, yes of course, it is necessary to use the mark in order to refer to the product/service in question. If I have something to say about Volkswagen, their cars, or their criminal violations diesel regulations, then I can't very well say "A German car maker". That could be Audi, BMW, Mercedes, and so on. In order to talk about Volkswagen, then it is necessary to use the word "Volkswagen". There are different opinions - even among UDRP panelists - as to whether that gives me the right to register an unadorned trademark.tld domain name instead of something like trademark-opinions.tld.

The case of ".reviews", specifically intended to indicated consumer reviews, raises something of a new fact for those panelists to argue about, since the "possibly third party" signal is built-in to the TLD.

But, leaving that aside, proceeding to: (2) is it legitimate to run a business based on publishing reviews of products? Well, sure, we see that all over the place.

Then we come to (3) is it legitimate to sell your business? Again, no brainer, sure.

Now what happens in domain land is that some idiot then gets the idea that what he'll do is to pretend he's running such a business, register a raft of domain names, and use the facade of his phony "business" merely as an excuse to register those domain names for the purpose of extorting the corresponding trademark owners. "If you don't control this name, then people might say all sorts of bad things about your stuff".

There's a line to be drawn there, and if I were deciding the case, I'd want to know a little bit more about your business and whether it is merely being proposed as an excuse to register the domain names - in other words, whether the horse was pulling the cart or the other way around.

To see how this sort of thing plays out, the adventures of the "Yoyo email" guy with the .mail TLD is a fine example of an elaborate bullshit excuse to register a bunch of famous trademarks as domain names.

jberryhill · May 26, 2016

To put it simply, many domainers seem to expect that a legitimate business looks like this:

If that's what your "legitimate business" looks like, then don't expect others to agree.

mirecart · May 26, 2016

jberryhill said:
Carter, in that type of situation, a finder of fact would want to go deeper into the situation.

There are situations where people come up with a "legitimate" business plan of some sort which is just a fig leaf for attempting to extort trademark owners.

Now, (1) is the use, in some general sense, of a trademark as a nominative reference to identify what is clearly third party reviews of that product lawful? Well, yes of course, it is necessary to use the mark in order to refer to the product/service in question. If I have something to say about Volkswagen, their cars, or their criminal violations diesel regulations, then I can't very well say "A German car maker". That could be Audi, BMW, Mercedes, and so on. In order to talk about Volkswagen, then it is necessary to use the word "Volkswagen". There are different opinions - even among UDRP panelists - as to whether that gives me the right to register an unadorned trademark.tld domain name instead of something like trademark-opinions.tld.

The case of ".reviews", specifically intended to indicated consumer reviews, raises something of a new fact for those panelists to argue about, since the "possibly third party" signal is built-in to the TLD.

But, leaving that aside, proceeding to: (2) is it legitimate to run a business based on publishing reviews of products? Well, sure, we see that all over the place.

Then we come to (3) is it legitimate to sell your business? Again, no brainer, sure.

Now what happens in domain land is that some idiot then gets the idea that what he'll do is to pretend he's running such a business, register a raft of domain names, and use the facade of his phony "business" merely as an excuse to register those domain names for the purpose of extorting the corresponding trademark owners. "If you don't control this name, then people might say all sorts of bad things about your stuff".

There's a line to be drawn there, and if I were deciding the case, I'd want to know a little bit more about your business and whether it is merely being proposed as an excuse to register the domain names - in other words, whether the horse was pulling the cart or the other way around.

To see how this sort of thing plays out, the adventures of the "Yoyo email" guy with the .mail TLD is a fine example of an elaborate bullsh*t excuse to register a bunch of famous trademarks as domain names.

Thank you for an incredibly well balanced reply to a troubling question I've spent many weeks debating on.

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