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Acquired a trademak term (keyword + co). Should I wait for 'that call'?

Labeled as question in Legal Discussion started by Jay Ha, Oct 10, 2018.

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  1. Jay Ha

    Jay Ha Exploring.. Gold Account

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    Found a really good domain in GD closeouts and due to me being a noob, I quickly bought it before checking WIPO thinking that there is a very low possibility some company would trademark this (WRONG).

    The domain name consists of a keyword + co (in dot com). For example, if the keyword is XXXXXX, the domain name would be XXXXXXco.com. Their TM would be 'XXXXXX co'. So that's an exact match.

    The trademark holder had it registered in Mexico and I don't think they are known globally since even their website uses the Mexican cctld. Can't be sure that they are the previous owners of the now my domain though.

    Their mark was applied for before the date of the domain registration but they got their mark registered 1 year later than the domain was registered (I bought it from closeouts yesterday though).

    Of course, I will not approach and try to sell the name to them, that's a no brainer. The thing is there are plenty of companies that have that keyword in their names but without the 'co' at the end, which can be short for company, communication, construction, consulting, to name a few. These companies work under a different class than the TM holder.

    So now I have some questions that I need answers for:
    1. Should I drop the name?
    2. If not, can I list it at domain marketplaces without any issues?
    3. If they approach me and threaten to sue me, can I just tell them that I'm not planning to use it in 'bad faith' and they can f* off?
    4. Can I try to sell it (outbound) to other companies that use the 'XXXXXX' name but operate in a class that is different to the holder's?
    I can already sense that I'm not in a strong position here but your opinions would be much appreciated. Of course I'm looking for some positive answers, but I'm also ready for the negatives.
     
    Last edited: Oct 10, 2018
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  2. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    Why not ? If you have determined this is more a liability than an asset, there is no point keeping it.
     
  3. karmaco

    karmaco Active Member VIP

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    The previous owner dropped it for a reason. That’s the first thing I look for when going through GoDaddy closeouts. Why.

    Seems like you allready know the answer and no help trying to justify selling it someone in another niche. If they wanted it they would have come looking. If you keep it don’t list it anywhere. I’d also check way back machine to see if previous owner had ads on it. Their actions could bite you.
     
  4. Jay Ha

    Jay Ha Exploring.. Gold Account

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    Thought some NP fellows had went through the same experience and had a positive outcome. Wasn't planning to hold it anyway. My plan is to practice outbounds using this 'disposable' name since I still don't have experience in outbounding, kind of an experiment. So it is outbound then wait a couple of months (most probably till end of January) for replies/offers and then drop it if I wasn't able to sell it.
     
  5. Jay Ha

    Jay Ha Exploring.. Gold Account

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    Archive has 3 snaps (span is 2 years) all of which are 404 error pages. What's the worst thing that can happen? I'm sure mark owners would contact me to give them the domain (which I surely will without hesitation) instead of going all UDRP on me. As for listing, this is surely off the table now. Didn't even post it in the "snap of the day" thread.
     
  6. topdom

    topdom Established Member

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    All keywords are trademarked.
    I wouldn't worry much about trademark unless it is famous and fanciful.
    It is stupid to register microsoft but it is ok to register windows.
    But if you register amazon, apple, ibm, in a strange extension when many other top generics are available this can be used against you in udrp, even if the complaint is about a different domain.

    You can drop it. I would probably not drop it just because of a tm. It depends on the domain. If it is valuable and hard to defend, then just build a site proving your good intentions. Don't make money at that site. Make sure its content is not related to tm topic.

    Outbounding to others is ok, why not.
    Listing on marketplaces can be used against you, but it may not be enough evidence by itself.
     

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