Dominion.Domains

Another Trademark Question re Generic Keywords :'(

Labeled as question in Legal Discussion started by Morgo, Jul 30, 2018.

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  1. Morgo

    Morgo New Member

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    I know this subject has probably been beaten to death, but in trying to get smart on trademarks I am a bit stumped on how easy it is to prove "bad faith." I understand there is a huge difference in registering something like ford or apple, versus something like horoscope, but how much care is needed in determining an appropriate sale strategy when a generic keyword like "horoscope" is trademarked?

    For example, horoscope is trademarked for perfume and a magazine. Say you have horoscope.ngtld, what is the best way to list this? (assuming ngtld becomes successful and "in demand")

    Is a generic landing page with contact info the best for this type of situation?

    Would listing it with a BIN price or a lease price prove "bad faith"?

    What made me nervous about listing is a .com that I was searching for led me to heavylifting.com - and it seems they are careful to note that all of their domains are for their own development and will not infringe on trademarks. Are they being overly cautious?

    Many thanks for any insights, opinions, etc.
     
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  2. Kate

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

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    If you use it for its generic meaning you should be fine.
    If your intention is to build a brand to sell perfume or run a magazine by the same name, then you need to think carefully, unless you're operating in a totally different territory perhaps.
     
  3. Morgo

    Morgo New Member

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    Thanks for the reply, Kate :)

    Quick follow-up: What about listing it for sale/lease? I'm mainly concerned with someone attempting to prove "bad faith," and whether I should:
    • Use a landing page with generic and relevant info to the keyword + a contact email;
    • Or to just go ahead and list for sale/lease on Undeveloped, Sedo, Afternic, etc, with a forward to the sale page.
     
  4. Kate

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

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    If you're going to park the domain, avoid sponsored links to products/services offered by the TM holders.
    But if you treat it as the generic name that it is, I don't see problems.
    The mere act of selling a name does not constitute bad faith, there has to be infringement of some sort.
     
  5. Morgo

    Morgo New Member

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    Got it, that makes sense. Thank you so much for your input, Kate.
     
  6. urljunky

    urljunky Upgraded Member Blue Account VIP

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    Sale landing pages are the best to by pass TM infringement on generic words. Even Apple.gtld with a for sale page is not infringement on Apple Computers.
     
  7. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    Uniregistry allows you to do both. One of the options in the Uniregistry Marketplace listing system is that you can specifically target the domain name to show results relating to horoscopes, along with a contact link for purchase inquiries about the domain name.

    Another option is a sales page which advertises the domain name for sale, and explains the value of the domain name for providing horoscopes. If you are going to have a "sale" page, then it only makes sense to point out that the domain name is generic for horoscopes, and would be highly valued for that purpose.

    (note: I do legal work for Uniregistry, so I happen to know the features of the Uniregistry system. I am not compensated for promotion of Uniregistry services.)
     

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