Adult domain potential TM violation?

[pixelbugnyc]

I have a question pertaining to the domain "pokeHerAfterDark.com"

This morning, I found an email from a guy asking for my selling price. I'm sure he tracked me down via my whois info. when i told him my asking price, he replied with the following:

"a little bit much considering NBC attorneys will probably take this away due to infringement. What's your bottom price?"

it is my understanding that TM laws define an infringement as misuse of a registered name used to cause confusion. my domain is not a casino related domain, therefore, no confusion. it is an adult domain. end of story.

so, is this guy onto something? or do I have a good ground to stand on?

 

[Erdy]

There are 3 requirements for your domain to be taken away from you. These are:

1. The domain being identical or confusingly smillar to complaints TM
2. Having no rights or legitimate interests to the domain
3. Registering and using in bad faith

1. I think there is little daubt your domain is confusingly smillar to pokerafterdark.com.
2. You have no TM for pokeHerAfterDark.com, have you?
3. This is the critical question and many domainers don't understand what bad faith means. I will put it very simple for you. The critical question is:

Were you thinking of TM holders name when you registered this domain?
You were. End of story. You lose the domain.

 

[bluesman]

Since I hang out no actual lawyer shingle, I invite the real lawyers on this board to deal with this. However, offhand I'd say you're okay:

You accomplished a name "spoof" by adding the all important letter H to make that word "HER," and spoofs, satires and parodies are protected under the law. However, I wouldn't advise making a regular habit of creating other such titles, since the rules usually protect your making occasional satires, not making an entire career out of them.

Since you spell it differently, and I assume you also make it very clear on your site that it is an ADULT one, and therefore not related to any show on TV or otherwise, that kills off all claims that it is "confusingly similar" to anything.

As to the guy who's so darn positive the name will be legally taken away from you, then why would HE be so eager to buy such a "dead" domain name? Does he think he has some magic that will protect him from NBC, whereas you don't?

Translation: The guy's tryin' to gaslight ya, but he's too full of gas himself.

Stock advice: Do not sell. Keep this share item in your portfolio until you hear that the NBC show is going to be canceled, then sell at that time.

 

[pixelbugnyc]

Thanks guys. this has shed a little more light into the world of TM concerns that surround us from time to time. I learned my lesson a long time ago about acquiring TM violation domains. My clear intention for this domain was for an adult site. its even parked that way. if people want to continue contributing to this post that would be great. maybe with similar situations? blues, what additional info do you have (maybe online) about laws protecting parody/satire) for example im curious how those parody tshirts get sold openly on many sites.

thoughts? please reply to that privately blues. lets keep this thread strictly for domains

thanks!

i would like to add...

i can't recall what domain i saw it under, but when doing a whois search on godaddy recently, the whois information included a blurb that introduced the company that owns the domain. along with a short pitch and mention that they respect TM regulations. does anyone have a sample TM disclaimer that i can use on my domains?

thanks!

 

[Ronald Regging]

You can't just register a domain and claim it's a parody of an established site. You actually have to create some form of parody...

And in reality, parking it with adult related ads may hurt your chances in a UDRP. You can't always predict what a panelist will consider "confusingly similar" and you also have to weigh in the fact that, regardless if it's used in a different category of goods, sometimes they may just find that your usage is damaging the image of the TM holder. This is especially true in cases of adult material. Considering that it's poker, it might not be as much an issue as in other cases, but it very well could be.

I think the buyer probably has a legitimate concern as far as TM issues go, but then again he's probably looking to convince you to sell it to him cheap. He probably doesn't care about TM or he may actually be from NBC, baiting you into either selling it cheap, or acquiring enough evidence to file a UDRP against you...

 

[DNQuest.com]

Soemtimes, "domaineers" are really funny to listen to (or read). Similar or confusingly similar is not just how it is written, sometimes.. now brace yourself.... saying something out load can be confusingly similar too, don't you think? Ask MikeRoweSoft.com... Imagine this, someone says. you gotta check out the porn at pokerherafterdark.com, the person thinks it is pokerafterdark.com (because it sounds almost exactly the same), does that not put the show in a bad light? A normal person can easily make that mistake and that is what TMs are meant to protect.

 

[pixelbugnyc]

i try to be creative when thinking of what domains to register and i never have the intention to violate any laws. when it dawns on me that i've done just that, i resign the domain immediately.

up until now, i believed that this domain was "safe", based on your situational example DNQuest, i can see how this domain can be questionable.

I am taking it down upon further review.

thanks all for your advice.

 

[bluesman]

Hold the phone, sparky. I thought you had a regular running adult site, which clearly proved it could never be connected with any G-rated TV show. But then you add that it's just "parked"? What's up with that? You know ICANN hates sites that are just parked - X-rated or otherwise!

To work a parody site, it has to be just that - working - ie moving. Just like with a TM - in constant USE. And it can't ever link to NBC or its competition, either. But now you're thinking of killing it off? That's a shame. It was a cute name that you could have done something with. Oh well.