question Company Names in .CO Question

gericsb · Jan 12, 2021

Can I register a .CO using a Trademarked company name?

Normally, I would have thought not.

However, I spend a lot of time going through the 'Report Completed Sales' thread on NP trying to reverse engineer why certain names sell.

I take the sold domain, go through Linked In, OpenCorporates, DotDB, Dofo, Google. NameBio etc.

One tool I always look at is Uspto.gov and their Trademark TESS database

Almost ALL of the .co domains reported in that thread are of registered Trademarks.

I guess the problem I am having is kind of a what came first. The chicken or the egg question.

It's a good strategy to register a domain with a lot of potential end users, right?

So someone looks through OpenCorporates, LinkedIn etc.

Wow there are 5,000 companies using the word: CoolWord.

However, one of these companies owns the TM on CoolWord

I wouldn't think I could register the domain:
CoolWord.co

But this seems to be the EXACT strategy that is working for .co sales.

I am not going to list the domains here, but DM me if you want some examples.

I don't get it.

johnn · Jan 12, 2021

I would stay away from this idea.
Spending time doing this you only have 1 or a couple buyers and may get into trouble.
No one would know the answer to this one until the company file against you.

Pick other names and you have a broader market.
Ex: If there is a company called InsureMyPenis.com - don't register InsureMyPenis.co - Register InsuranceForMen.com or .co instead.

DomainBanana · Jan 12, 2021

The TLD (.com, .co, etc.) has nothing to do with UDRP cases, except for the rare case where the TLD is part of the brand.

Deliberately registering TM names in another extension will not save you from a UDRP.

gericsb · Jan 12, 2021

DomainBanana said:
The TLD (.com, .co, etc.) has nothing to do with UDRP cases, except for the rare case where the TLD is part of the brand.

Deliberately registering TM names in another extension will not save you from a UDRP.

So, I agree with this and johnn above.

My confusion stems from the fact that I keep seeing domains sold (mainly in CO) of companies using a word or term.

For example. I find a Lot of companies in Open Corpirates using the term 'Red Lion' just as an example.

I try to register RedLion dot com but it's taken.

Since there are 3,472 companies using Red Lion in Open Corporates (again just an example using made up numbers) I go ahead and register:
RedLion dot co

....even though one of these is a registerd TM

Lo and behold I am reading the completed sales thread and

RedLion dot co sells for xxxx

The dot coms I see sell are more like generic terms:
ClickFunnels
FunnyVideos

Etc.

Every dot CO name I see that sells seems to be a company trademark.

What am I missing?

DomainBanana · Jan 12, 2021

gericsb said:
So, I agree with this and johnn above.

What am I missing?

My sense is that if a term is clearly identified with a single TM brand, then it is off limits.

But, if a term is versatile enough to be branded for many uses across many industries, like Red Lion, then it is usually ok.

I am not a lawyer. Just giving my personal opinion here.

gericsb · Jan 12, 2021

DomainBanana said:
My sense is that if a term is clearly identified with a single TM brand, then it is off limits.

But, if a term is versatile enough to be branded for many uses across many industries, like Red Lion, then it is usually ok.

I am not a lawyer. Just giving my personal opinion here.

That may be the case.

blogspotter · Jan 12, 2021

If it is a made up name or unique combination words and a particular company has a lot of trademarks in a various categories, that is one way of looking at it.

But generic names that has a lot of trademarks by different people in different classes is a great indicator that the .co version of that name will sell with a better than average probability.

When you look at Linkedin, you just don't look at the number of results but how diverse the different companies.

Even if it is generic, there are some litigation happy companies and it would do you well you avoid those.

Mike Cyger teaches about trademarks as well as reading the data very well on DNAcademy

J. Sharma · Jan 12, 2021

I think trademark domain buying is not a good IDEA. If you are buying and run a website with high traffic and earn good money and the trademark owner claim the name, your website is closed due to copyright.

Zilla · Jan 17, 2021

no worry imo...TM protection have its own limitation, a registed TM in certain country may not a registed TM worldwide....a registed TM in certain industry may not a registed TM in other industry...

question Company Names in .CO Question

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