Are defensive regs, a form of squatting?

[alien51]

I own a two-word dictionary e-commerce domain, and lately i tried to build a fence around it by scooping the unregged nets and orgs for both the plural and singular version of the domain.

Could i be accused of squatting on those defensive regs? I don't have a trademark. Only one (1) domain is in use. The others don't resolve to anything, but i plan to redirect them to the live site.

Is "redirection" considered legitimate use?

 

[Ted.T]

Why not? You have the right to register any domain you like, as long as you don't infringe other person's trademark.

 

[Chris Wright]

Shelby90 is correct.
It's only squatting if you reg a TM term for the purpose of:
1. exploiting the value of the trademark, by selling or advertising in the same market as the TM holder(s), or
2. holding the domain(s) hostage, waiting for the TM Holder to pay ransom.
If you're not doing any of this, you're almost certainly in the clear.
If in doubt consult a domain attorney.

 

[alien51]

Thanks for the replies.

However, the battleground in UDRPs nowadays revolve around the vague qualifier: "legitimate use". It doesn't even matter now whether the trademark was obtained years AFTER you regged your domain.

You regged the domain in 2003, you could lose it from a trademark that was granted in 2010 just because you are accused of no "legitimate use" for the domain. Putting the domain for sale to "anybody" is even treated as bad faith now.

Hypothetical example: Suppose i own REDCROSS.COM. Then i do defensive regs for REDCROSS.NET and REDCROSS.ORG. But i am only using the .COM as my live site.

Somebody who trademarks redcross for a power drink brand and wants to use either the .NET or .ORG domain, will then sue me for "no legitimate use" for my defensive regs.

 

[Ted.T]

Just redirect all domains to your main one. That's all.

 

[Chris Wright]

However, the battleground in UDRPs nowadays revolve around the vague qualifier: "legitimate use". It doesn't even matter now whether the trademark was obtained years AFTER you regged your domain.

You regged the domain in 2003, you could lose it from a trademark that was granted in 2010 just because you are accused of no "legitimate use" for the domain. Putting the domain for sale to "anybody" is even treated as bad faith now.

Hypothetical example: Suppose i own REDCROSS.COM. Then i do defensive regs for REDCROSS.NET and REDCROSS.ORG. But i am only using the .COM as my live site.

Somebody who trademarks redcross for a power drink brand and wants to use either the .NET or .ORG domain, will then sue me for "no legitimate use" for my defensive regs.

I have no idea what your question is really about.
If you are fearful that bad things can happen to good people, that is true.
If you have a specific case you are wondering about, let us know.

 

[alien51]

Just redirect all domains to your main one. That's all.

But that is not "legitimate use".

You haven't read the UDRPs lately? People lose their domains because of "no legitimate use". And redirection is not legitimate use for offering goods or services.

 

[arend]

If you're worried about it don't do it then.

 

[alien51]

If you're worried about it don't do it then.

Before i cave in to my worries, i would like to ask people here if they have some solid facts to share about this matter.

 

[carob]

Can't offer facts here, just an opinion.

You say you don't have a (registered) trademark. But using a domain is a step towards establishing a trademark in practice. When you have a trademark you have an obligation to defend it, so buying up related domains makes sense. If you did it thinking they would bring traffic that is a good use - the UDRP thing vaguely looks at what your state of mind or intentions were when you registered something. Has anyone argued that they were drunk and bought something on impuse as a gift??? What do you think lies behind some of the many registrations of weed names these days?

You don't say if there is already someone out there with a competing TM to worry about, but if there is, they'll want the main domain, not the nets orgs and so on imo. So my concern here would be wasting money on useless domains, not TMs.

 

[alien51]

Can't offer facts here, just an opinion.

Yes, i meant solid opinions. Thanks for sharing what you have in mind.

You don't say if there is already someone out there with a competing TM to worry about, but if there is, they'll want the main domain, not the nets orgs and so on imo.

Yes, it's the 4th time actually that some legit entity TM'ed my domains (as in, they obtained their TM just recently, even though i owned the domain names for years). Two of those domains i only have non-ad serving landing pages, because development on those domains are not yet my priority at this time. To an outsider, the domains are "visibly not in use".

My worry is about the current trend in UDRP decisions where domain owners are stripped of their domains simply because they are dead sites. And dead sites give the impression of squatting.

In one UDRP i've read, the domain owner reasoned that his web developer was loaded and thus had no time developing the domain. He mentioned that to satisfy the requirement of "future use" argument. But the UDRP panel treated it as an alibi and ordered the transfer of the domain. A lot of these UDRP panel guys are nuts.

So my concern here would be wasting money on useless domains, not TMs.

Basically, i also want to shutout the competition. I have a few com domains that sit side-by-side on search results with the net domains owned by someone else. And we're competing on the same niche! It's kinda annoying. So it's not exactly useless defensive regs to me.

 

[Kate]

Is the main domain developed ? Then you redirect the defensive regs to the main domain and that's it.
Big companies, including those that are used to filing UDRPs, know a thing or two about defensive regs. Defensive regs are not only perfectly legitimate, they are often necessary when establishing a brand. Even if that means depriving the competition from getting their hands on generic domains they could use.

 

[alien51]

Is the main domain developed ? Then you redirect the defensive regs to the main domain and that's it.

Yes, it is. I was just wondering whether "redirection" is not a legitimate use, because you are practically squatting on the domain with no other use but redirect traffic elsewhere, and not an offering of goods or services.

Big companies, including those that are used to filing UDRPs, know a thing or two about defensive regs. Defensive regs are not only perfectly legitimate, they are often necessary when establishing a brand. Even if that means depriving the competition from getting their hands on generic domains they could use.

What would you tell the WIPO panel if they tell you your defensive reg domain is not being used for any legitimate offering of goods or services? Can you tell them i regged the domain to prevent others from using it?

 

[Kate]

What would you tell the WIPO panel if they tell you your defensive reg domain is not being used for any legitimate offering of goods or services? Can you tell them i regged the domain to prevent others from using it?

Absolutely, you are building a brand in some way even if it's not TMed. Your usage rights are supported by the main domain. So you are not squatting here, you are:

1. doing defensive registrations to protect yourself from cybersquatters
2. possibly taking the other domains off the hands of potential competitors, this is allowed in a capitalist society

Also you say, the other domains are almost identical and clearly relate to the main domain. These are not arbitrary domains.

While I am not a lawyer, I would like to say that the fact that you are doing defensive registrations, suggests that you take your 'brand' seriously, in a way you are asserting TM rights through usage and awareness of Internet issues.

 

[Rado_Ch]

And further more, parking the domains to open one and the same main website is not even "preventing others from using it", you are following a perfectly natural business practice of strengthening your brand on top of the defensive use (to avoid cybersquatters yourself). And with your lack of trademark that is more than a logical move - you want to ensure that same/similar names with a different extension won't be munching from your traffic.

Now if a company with a TM pops out of the blue, claiming that your domain falls under the graph "identical or confusingly similar" then they have more ground for a claim. But even in such a case its not a sure win for them. As you are already using this domain for some time before their claim, you can prove that you are "an individual, business, or other organization that has been commonly known by the domain name".Further more, it states that "... the trademark holder must prove all three of the required elements stated in 4(a) to force the transfer or cancellation of a domain name under the UDRP". So all the 4 conditions listed there, should be met. And for your case you are definitely well-protected and shouldn't face any issues with those extra extensions.

Btw is it certain that domain redirecting (parking) is not a "legitimate use"? Because it does sound kinda strange, thats a very popular branding method. What does fall into legitimate use then? Having a valid website for each domain?

 

[alien51]

Btw is it certain that domain redirecting (parking) is not a "legitimate use"?

Yes, it is not. Read the UDRP cases related to such issue. You will be shocked.

What does fall into legitimate use then? Having a valid website for each domain?

The legitimate offering of goods and services. Or a valid "non-commercial" use. The word "valid" here, does not include a dead site or landing page. The website must show an illusion of "activity" that gives an impression that it is being "used".


By the way, thanks to all inputs. I gave rep points to everyone in the thread.

 

[Dave_Z]

In one UDRP i've read, the domain owner reasoned that his web developer was loaded and thus had no time developing the domain. He mentioned that to satisfy the requirement of "future use" argument. But the UDRP panel treated it as an alibi and ordered the transfer of the domain. A lot of these UDRP panel guys are nuts

I think an idea there is one ought to be ready to back up their claim. If the person plans to use the domain name for something, then he or she should (sort of) show proof of that.

(Granted, one may feel like being "forced" to reveal his or her plans doing the above. Not to mention that anyone can come up with anything.)

While old, this decision came to my mind as an example:

http://domains.adrforum.com/domains/decisions/868828.htm

The picture that emerges from this material is of the Respondent, having seen Complainant‘s WARGAMES movie as a teenager in or about 1983 and having developed a professional interest in computer programming and wargames, to the extent of writing about them, creating them and publishing material on numerous websites, registered the disputed domain name <wargames.com> in 1998 with the idea of one day using it to sell wargames over the Internet. That idea remained in abeyance for six years until Respondent began to prepare to open his online store. Meantime the domain name resolved to a website which, inter alia, contained advertising links which most likely generated PPC revenue. By the time Complainant complained by letter of September 7, 2006, preparations to open the online store had advanced sufficiently to enable Respondent to advance his plans and to open the store on September 14, 2006.

Sometimes one can just explain something, other times he or she needs to "prove" that.

Anyway, you're anticipating (maybe among) the worst. At least you're some steps ahead of others, and those complainants have to prove their side before you ever do.

Btw is it certain that domain redirecting (parking) is not a "legitimate use"? Because it does sound kinda strange, thats a very popular branding method. What does fall into legitimate use then? Having a valid website for each domain?

http://www.namepros.com/domain-name...iner-loses-veko-com-udrp-one.html#post4498515

 

[Rado_Ch]

http://www.namepros.com/domain-name...iner-loses-veko-com-udrp-one.html#post4498515

Much obliged for that, Dave