question Registering or Acquiring a TM domain whose TM shows DEAD

UDRP case against it will consider Common Law mark if filed.

mAd MaX said:

UDRP case against it will consider Common Law mark if filed.

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Means still trademarked?

Shaun Lun said:

Means still trademarked?

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Not exactly but that's a criteria commonly used.

So I guess it's a little grey area. No doubt the name has pretty good backlink profile. But one thing I would like to add is that the name remained unused for the past years, it was parked free. I guess they pretty much left the business or so. More inputs from experienced domainers will really help. Thanks in advance.

Shaun Lun said:

Starting a new thread here because I couldn't find a thread that exactly match my enquiry.

Seeking NP members' advice.

So I read abit about trademarked domains and maintained staying away from them. But recently I came across one which used to be a brand in the past. A quick google search says that the TM status is DEAD.

Does this mean the domain is free from trademark and is it safe to acquire the name? I searched uspto database.

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My experience is, if you ask 10 different lawyers you'll get 10 different answers. First off, I don't believe there is anything that should keep you from registering the name imho. I own a few names where the local attorney here on NP accused me of cyber squatting. They're BeatleMemories, YankeeMemories and HarleyMemories, and I just registered a few minutes ago SavortheTiger that could also be considered some sort of TM violation if it weren't for the fact that Tigers are a real big deal in Africa, Zoos and all around the world. I personally own three trademarks that I did myself, and if someone violated them with intent to harm me and benefit themselves they'd have a huge fight on their hands. However, if they just needed the name for something altruistic, I would actually encourage them and wish them well.

I personally would be quite happy to register a domain where the TM is showing dead, obviously check for any other TM's that are live. Take note of the dates just for future reference. Best to stay away from the same product/service categories, particularly if it is only a recent cancellation .

I did have quite a major company come after me and threatening all sorts of consequences if I didn't return a registered domain after letting their domain and trademark expire, They tried so many lies to try to justify their claim that I thought OK, now You've also lost my sympathy,, lets go into battle.

Yep, they gave-up in the end.

Yep, it's a very old case. It was cancelled back in 2006, as the company could not provide declaration under certain section. And i could see the name was parked at the registrars for the past 3-4 years.

13 years is a long, long time. Definitely take the domain if you want it. At that age I wouldn't even worry about the previous (applied for) TM categories.

That's good to read that your acting with due diligence and investigating the history. That's part of what makes domaining so interesting at times'

In these type of instances it's always worth checking similar words, plurals etc just to make sure they (the previous TM applicant) hasn't gone with something very similar and has a valid TM for something very close - This again is just for TM category overlap

Thanks for the input @BaileyUK I will share the name once it everything is complete in case anyone wants to know. I am not great but wannabe domainer. NP has been so helpful over the years.

For a start: https://www.namepros.com/threads/my-domain-has-a-dead-trademark-am-i-safe.583730/

I guess no matter how many times the question is asked, the best reply is: it depends and there is no clear cut answer to it. Anyway, thanks for the insights.

Shaun Lun said:

I guess no matter how many times the question is asked, the best reply is: it depends and there is no clear cut answer to it. Anyway, thanks for the insights.

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Shaun...a couple of my favorite people/members in the world just chimed in because of my response. For the record I'm not a lawyer, but I have had a little practical experience involving trademarks. I'm not sure if you're familiar with UDRP, but here is something you need to read;

The Uniform Domain Name Dispute Resolution Policy (UDRP) is designed to address cases of abusive domain name registration and use. To prevail, a complainant must prove all of the following elements:

• The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• The domain name registrant has no rights or legitimate interests in respect of the domain name; and
• The domain name has been registered and is being used in bad faith

Based on this information Shaun, I would recommend you do what you believe is right and in good faith. Also for the record Shaun, I own the name DomainEthics.com that when complete will address issues similar to yours and mine.

Good Luck!

Shaun Lun said:

I guess no matter how many times the question is asked, the best reply is: it depends and there is no clear cut answer to it.

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Here’s the thing. Is there a clear-cut answer to this question:

What color is a dog?

Well, some dogs are brown, some dogs are black, and so on. It depends on what sort of dog you have. If you have a German Shepherd, it’s probably brown and black. If you have a Husky, it’s probably grey and white.

How long is a piece of wood?

The USPTO database can tell you whether a mark is registered. It cannot provide comprehensive information on whether a mark exists. It can provide a lot of useful information, but since domaines incorrectly think of it as a “directory of trademarks”, the answers to questions like this are disappointing.

How long should I boil pasta?

When the answer is “it depends”, then the important thing is to get some idea of what sorts if facts it depends upon.

jberryhill said:

How long is a piece of wood?

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The same length from the middle to the end, as the beginning to the middle

The answers are there if you are clever enough to find them.

@Shaun Lun what @jberryhill is saying in other words is that if they are still in business then regardless of the TM status (dead or alive), you should not get this domain because you will attract troubles to yourself as honey attract bees.

So do more research and double check twice that they are really out of business and there are no close variations to the TM..etc.

If it is an average domain name then it is not worth the trouble, for a peace of mind I would stay away and move on.

Ostrados said:

@Shaun Lun what @jberryhill is saying in other words is that if they are still in business then regardless of the TM status (dead or alive), you should not get this domain because you will attract troubles to yourself as honey attract bees.

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This, right here, is now plain and simple. Thanks for the clear interpretation @Ostrados

Ostrados said:

@Shaun LunIf it is an average domain name then it is not worth the trouble, for a peace of mind I would stay away and move on.

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Well, it's a really good brandable one which is why it was once a brand. From my research they are out of business, but a close variation does exists in another country in the same area of business but I am almost they don't hold the trademark for this particular one. I mean that close variation is "this brand" plus some general word (a two worded brand).

Thanks once again for your valuable contribution.

I do have a similar case. A dead/abandoned trademark (no statement of use filed). For one particular domain. Only a US TM was ever filed, and they don't use either that domain or term any more. They use however another variation of the term, with it being a two-word "brandable", where they use the latter part of the domain name.

As I am living in Norway, it would be safe for me to own that domain, even though it was live? It would have to be filed for protection internationally under the Madrid Protocol. That's how I understand it.

Any example of a domain name dispute between a business and domain owner over a dead TM only applicable in the US, where the registrant of the domain name is resident outside the US?

BrandsOpen said:

As I am living in Norway, it would be safe for me to own that domain, even though it was live?

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So, you might be unaware of this potential Complainant when you registered the domain name.

Craig Media, Inc. v. Kim Hyungho, WIPO Case No. D2004-0091:

"The Respondent denies that he was aware of the Complainant and its A-CHANNEL mark when he registered the Domain Name. If, as the Respondent asserts, the Respondent was not aware of the Complainant and its trade marks at the time of registration of the Domain Name, the Complaint must fail. The bad faith concept necessarily involves the registrant registering the Domain Name with the Complainant or its trade marks in mind.

The fact that the Complainant and its A-Channel is very well known in Canada does not mean that it is well known in Korea. The Complainant has produced no evidence to suggest why it should have been well known in Korea. The Panel sees no reason why the Respondent should have been aware of the Complainant and its A-Channel when he acquired the Domain Name.

In these circumstances, the Panel declines to override the Respondent's denial on this crucial point and finds that the Complainant has failed to prove that the Domain Name was registered in bad faith and is being used in bad faith."

https://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0091.html