discuss UDRP - Unregistered Trade mark

Generic words can be trademarked. But not just as a word. There is a topic, and a location, and a logo etc as parts of the TM.

You can use the same generic word safely unless you abuse it: for example they sell shoes on grapes.com, and you sell slippers on grapes.net , your logo is similar to theirs, or you pretend to be them etc, then this would be risky. If they sell grapes on grapes.com and you sell grapes on grapes.net this would be ok.

If it is a fanciful word like microsoft, you can't do anything with microsoft.tld. But you can create a web site like microsoftsucks.info and critisize microsoft there.

UDRP is not the worst thing. You can lose the domain at worst, and once you lose a UDRP, it can be used against you in other UDRP cases.

I'm not an expert but I know this much.

If they have "keyword tld" as trademark, and you have keyword.tld domain, this is still risky.
.....
keywordcard.com sent me a CD letter for keywordcoin.com

There were sites keyword.com and keywordcoin.eu in the same topic, and I told them that these companies have more rights in keywordcoin.com than you do. And I started an auction with 3K buy now price, and they bought it without discussing this thing any further. My best sale this year. I played my role perfectly, except that maybe my BIN should have been higher (shoot to moon).

Why didn't I put a much higher BIN. Simple (but maybe stupid): They are law people who are trying to scam their companies, not trying to get the domain for cheap. But they need to justify their filing UDRP (by saying, price was too high).

Thanks Topdom!

Another interesting angle to this:
What if someone say registers TM for Grapes for selling actual grapes.

Will those registering domain name with grapes in the name have risk of UDRP after that?
Example what happens when:
-The new domain owners are also selling grapes
-The new domain owners are selling say soaps or something completely different

In another case, a company named keyword, owning most of keyword.tld's, sent a CD letter by email for keyword.tech.
I put a 3 fig price on it, and defended it agressively. Probably they were convinced and didn't take any further action. I wish I didn't defend it. I killed their motivation while defending.

topdom said:

If they have "keyword tld" as trademark, and you have keyword.tld domain, this is still risky.
.....
keywordcard.com sent me a CD letter for keywordcoin.com

There were sites keyword.com and keywordcoin.eu in the same topic, and I told them that these companies have more rights in keywordcoin.com than you do. And I started an auction with 3K buy now price, and they bought it without discussing this thing any further. My best sale this year. I played my role perfectly, except that maybe my BIN should have been higher (shoot to moon).

Why didn't I put a much higher BIN. Simple (but maybe stupid): They are law people who are trying to scam their companies, not trying to get the domain for cheap. But they need to justify their filing UDRP (by saying, price was too high).

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Did they have TM on "keywordcard" or "keyword"?
If not, on what basis did they send the CD letter ?

I think they can't trademark "grapes" to sell grapes, or it wouldn't be a strong mark. You can still sell grapes or anything else on grapes.net. Just make sure you don't pretend to be them, and don't create confusion.

The real purpose of TMs is protecting consumers. UDRP rules are just commonsense. But actual UDRP cases are usually biased. So they can take screenshot of your domain with their competitor's ppc ad on it,
and even if this was not your choice and you didn't make any money on it, it would still be considered as bad faith.
Just trying to sell the domain can also be considered as evidence of bad faith. If you list it on a marketplace, this may not be a strong evidence, but if you try to sell that domain to them or to their competitor, this would be strong evidence.

They had trademark on keywordcard. Keyword.com was a totally unrelated site, and was on the same topic. So they can't possibly have trademark on "keyword" at the same time.
Their case would be very weak, but I didn't know how motivated they were.

topdom said:

I think they can't trademark "grapes" to sell grapes, or it wouldn't be a strong mark. You can still sell grapes or anything else on grapes.net. Just make sure you don't pretend to be them, and don't create confusion.

The real purpose of TMs is protecting consumers. UDRP rules are just commonsense. But actual UDRP cases are usually biased. So they can take screenshot of your domain with their competitor's ppc ad on it,
and even if this was not your choice and you didn't make any money on it, it would be considered bad faith.
Just trying to sell the domain can also be considered as evidence of bad faith. If you list it on a marketplace, this may not be a strong evidence, but if you try to sell that domain to them or to their competitor, this would be strong evidence.

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Two concerns which can be used against us by the TM owners:
-Just buying domains to sell can be considered faith (as that's what most of us wish to do..)
-Brand dilution - Creating confusion about the TM amongst it's users .

Say I register Applehealth dot something, wont I get UDRP from Apple for creating confusion about Apple TM.
Even though as a respondent I have 2 reasons:
-Apple is a generic word for the fruit Apple.
-I am not in the tech Business like Apple, but health care or related niche.

Still I don't think I would be able to defend, right ?

I don't see any problem with registering or trying to sell applehealth.com.
But buyers may not be willing to use such a domain. Also it wouldn't be a valuable domain.
If you try to sell it to Apple Inc, you would lose in udrp (unless they want it and price is low).

A real risk can be this:
You have apple.tld which is valuable and you want to protect it. Normally you can defend it easily.
But if you also have applehealth.com, ibmshoes.com, amazonkitchen.com, teslacard.com, facesbook.com,
they can look at the pattern and use it as evidence of bad baith.

In conclusion, I feel it's of no use to buy domain with TM in them even if one plans a different niche/market than the TM.
As you said the buyers will not be ready for the risk, even if the niche is different.

topdom said:

A real risk can be this:
You have apple.tld which is valuable and you want to protect it. Normally you can defend it easily.
But if you also have applehealth.com, ibmshoes.com, amazonkitchen.com, teslacard.com, facesbook.com,
they can look at the pattern and use it as evidence of bad baith.

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One can defend apple.tld easily ?
But if one receives a UDRP from Apple lawyers, would we actually have the courage to defend against such big companies ?
Even Applehealth dot com (different niche), will be risky to own in my opinion.

Even if we don't own other TM word combinations in our portfolio, still it won't be easy ..

They would simply claim that we are diluting their brand and creating confusion in their market.

Or am I overthinking and being overcautious ?

All words are trademarked. I don't worry much about trademarks. I know what is ok, what is not ok. If there is a risk, I evaluate it and sometimes take the risk. Main problem is not that you wlll get UDRP. For me the main problem is: not receiving any offers or inquiries or even CD letters, this would mean I bought unsellable domains and wasted my money.

steven55 said:

Even though as a respondent I have 2 reasons:
-Apple is a generic word for the fruit Apple.
-I am not in the tech Business like Apple, but health care or related niche.

Still I don't think I would be able to defend, right ?

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I think you would lose. The Apple watch has healthcare functions, so you would be in a similar business to them. If you bought the domain to sell, I doubt anyone setting up a 'health' business would want that name. It's just asking for trouble. Even if you started a business with that name, would you want the stress of a court case? There are much better names you could use. As a consumer, if I saw a business called Apple Health I'd assume it was related to Apple. It would cause confusion.

I think huge companies like Apple, Amazon, etc have some kind of special status because they're so well know. But it also depends on the country. Amazon Cafe is one of the most popular cafe chains in Thailand and doesn't have anything to do with Amazon.com. As Amazon isn't in Thailand it doesn't create any confusion, as most Thai people don't know about and don't care about Amazon.com.

UDRP is alway a problem with domainers. but i think you dont have to worries much because it take long process to get win. Even thought they have big chance to win, negotiating is very wise and cheap way.

You can defend it like this if you have it:

Apple is generic, health is generic, apple health has a meaning, namely health of apples. You can sell a product which is not toxic and protects apples from invaders. My intention with registering it was selling, but not selling it to you, otherwise the asking price would be more than 500.

No more comment needed. Let them udrp.

topdom said:

You can defend it like this if you have it:

Apple is generic, health is generic, apple health has a meaning, namely health of apples. You can sell a product which is not toxic and protects apples from invaders. My intention with registering it was selling, but not selling it to you, otherwise the asking price would be more than 500.

No more comment needed. Let them udrp.

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Yes, you'd be able to defend it if you were selling the product that you suggested.

With TM's and UDRP's there is no "one size fits all" approach. Each domain is unique and so are the circumstances.

Nearly all English words are TM'd, but legal and fair use can still be found.

Conclusion:
If you are in different country or completely different niche, you don't have to worry about the TM and related UDRP threat.

That was as regards UDRP related to Trademarks.

But the main question which I also wished to discuss is whether there could be any other reasons
apart from Trade mark, for which one could receive a UDRP complaint for a domain?

Anyone has experience about such a thing happening at all ?

steven55 said:

But the main question which I also wished to discuss is whether there could be any other reasons
apart from Trade mark, for which one could receive a UDRP complaint for a domain?

Click to expand...

I think there no other reason beside trademark

steven55 said:

Thanks Topdom!

Another interesting angle to this:
What if someone say registers TM for Grapes for selling actual grapes.

Will those registering domain name with grapes in the name have risk of UDRP after that?
Example what happens when:
-The new domain owners are also selling grapes
-The new domain owners are selling say soaps or something completely different

Click to expand...

I am not a legal expert, but I suspect that the TM offices would not approve a TM on the name grapes for selling grapes, because it is a generic word already widely in use for that purpose around the world.

Note that TM can be enforced even if it was not registered. So just because the company did not register the word grapes for their say wine coloured clothing line, if they have been using that as a name in a business for some time, they would still have rights.

As well as confusing similarity, note that there are two other elements to be proved in a successful UDRP. But it is good to have more than one grounds in your favour just to be sure.

I know some have commented elsewhere and here that UDRP is not that big a thing, other than losing one can increase your chances of losing another, but if the ICANN proposal being floated now to make it that two names lost via URS (a bit different but similar) could mean various penalties including losing your names and not being allowed for a period of time to invest in domain names, that would be hugely serious. It is therefore in everyone's interest to not have any decisions against them. I certainly hope this new proposal does not find approval.

Bob

Bob Hawkes said:

Note that TM can be enforced even if it was not registered. So just because the company did not register the word grapes for their say wine coloured clothing line, if they have been using that as a name in a business for some time, they would still have rights.

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Thanks Bob for your insightful replies!

See, this was exactly my concern!
You search the TM database, there is no TM for your searched word.
But there is a well established Business using that word for some of their popular product lines.
You register the domain thinking there is no TM, but still you get a UDRP, you cannot defend by saying
that that the complainant company has no TM on that name.
The company has a proper established Business on that name.

Isn't that worrying? No TM and still you get a UDRP..
But really, is this possible ?

Bob Hawkes said:

I know some have commented elsewhere and here that UDRP is not that big a thing, other than losing one can increase your chances of losing another, but if the ICANN proposal being floated now to make it that two names lost via URS (a bit different but similar) could mean various penalties including losing your names and not being allowed for a period of time to invest in domain names, that would be hugely serious. It is therefore in everyone's interest to not have any decisions against them. I certainly hope this new proposal does not find approval.

Click to expand...

Exactly, getting UDRP complaints, defending them, losing them, all this is quite a headache.
So even if it's not a big thing to get a UDRP, we as domainers need to be clear about the related nuances.