auctions Be careful – that expiring domain you’re buying could come with Trademark trouble - MorganLinton.com

[J.R.]

https://morganlinton.com/be-careful...d-come-with-trademark-trouble/#comment-166448

I spoke with a GoDaddy rep on this issue last week, and was told that even if a Trademark holder notifies GoDaddy to alert them that a domain name on auction infringes their Trademark rights; they will not add a disclaimer or disclose to auction bidders that they have been contacted by a verified registered Trademark holder. Thus, they allow the domain name to be sold, pocket the money, and let the new domain registrant get UDRP'd or sued almost immediately after the domain auction closes on their platform ( at least according to the GoDaddy rep).

To those who have a solid understanding of IP law and UDRP process; should registries voluntarily disclose to all auction bidders when they have received a verified notification of trademark rights on a domain at auction? Would this disclosure improve transparency?

I've noticed that GoDaddy reps do follow the NamePros forum. They seem interested in hearing feedback on improving their customer service experience.

 

[WebSolutions.GA]

@Jahe I know, it is just as absurd to think that a company making that much money might be able to afford to hire an employee to actually read the discussions on the largest domaining forum and maybe... I don't know... open up a line of communication.

*Shrugs*

 

[J.R.]

@WebSolutions.GA See, you may have just created yourself a job. Why don't you write up a job description, contact the executives over at GD, and make a case for you being their newest employee? Opportunity knocks?

 

[WebSolutions.GA]

@Jahe I'm afraid I have a couple conflicts of interest that prohibit me from working at or for GoDaddy. Ethics and a moral compass.

 

[IMEZI]

Are you really surprised a company like Godaddy doesn't have domainer's best interest at the forefront of their operations? I still voted no, because their due diligence shouldn't even allow these sort of blatantly dangerous auctions to take place.

Godaddy is *actually* profiting from active trademarks, there has to be a liability for them in this...? Looking for expert opinions.

Godaddy charging 50$ for every domain owner who got URDP, they said that 50$ for the handling fee.

here is the email i got from godaddy back on 2013 http://prntscr.com/jz4aif

 

[WebSolutions.GA]

Godaddy charging 50$ for every domain owner who got URDP, they said that 50$ for the handling fee.

So not only are they pocketing the profits from the sale of a domain that they have received a Notice of Intent from a verified TM holder on, they are profiting doubly by then charging the buyer $50 when they get UDRP'd?

How has this not been taken to court at some point?!

 

[J.R.]

Godaddy charging 50$ for every domain owner who got URDP, they said that 50$ for the handling fee.

here is the email i got from godaddy back on 2013 http://prntscr.com/jz4aif

Wow! Never seen or heard anything like that before. Hence the reason GoDaddy should voluntarily change its policy. Why not even offer a in-house system like what the Trademark Clearinghouse does with non-dot-Com?

 

[frank-germany]

a domain name can not infringe a trademark that is not famous
as it's not clear what you will use it for

the infringing use of the domain
makes it a trademark case
not the name it self


disclaimer:
I am no lawyer
no legal advise

 

[jberryhill]

the infringing use of the domain
makes it a trademark case
not the name it self

That's a very good point. Absent fame (OR some other type of high-degree of distinctiveness, such as inherent distinctiveness), then there are a number of problems with the idea that GoDaddy should do anything in these circumstances.

 

[DomainRecap]

I have to say no in my opinion, due to the disclaimers and other rulings and opinions in the courts showing that auction operators are not liable for the trademark infringement of the sellers and buyers. The auction platform operators are considered protected third parties.
Again, my opinion, that is a little above my pay grade in the legalese department.

This type of ruling is often the result of a truckload of money being delivered to someone.

 

[DomainRecap]

the infringing use of the domain
makes it a trademark case
not the name it self

Not true, as ownership is more than enough in a tight TM case. There have been many examples of non-resolving domains lost in UDRP, so that is no different than GoDaddy's ownership position.

 

[namezest]

If you don't earn revenue by parking such a domain, using anothers trademarks and do not use it for the exact same business model, there is no such trademark infringement. There would only be a "Bad faith" law suit initiated by the trademark holder in order to gain control of anothers rightful property, tangible or intangible, thus putting the "Bad Faith" legal entity at risk of court imposed penalties and further financial risk.

 

[smartwebby]

If you don't earn revenue by parking such a domain, using anothers trademarks and do not use it for the exact same business model, there is no such trademark infringement. There would only be a "Bad faith" law suit initiated by the trademark holder in order to gain control of anothers rightful property, tangible or intangible, thus putting the "Bad Faith" legal entity at risk of court imposed penalties and further financial risk.

Either way its a legal tangle. Firstly I feel it's totally weird that an obvious TM infringing domain name like NikeShoes.com would/could sell for USD 10000 Who are these half brained bidders?? You cannot get any more infringing than having Shoes as the second word.

Regarding the discussion, my opinion is to suggest Godaddy take it midway. Assuming the volume is too huge to monitor Godaddy legal should have their people watch auctions that go above a certain amount (say USD 200 or 500) and the lesser ones would just be collateral damage for the buyer who risked it (stupidly or naively me thinks).

best,
Anita

 

[frank-germany]

Either way its a legal tangle. Firstly I feel it's totally weird that an obvious TM infringing domain name like NikeShoes.com would/could sell for USD 10000 Who are these half brained bidders?? You cannot get any more infringing than having Shoes as the second word.

Regarding the discussion, my opinion is to suggest Godaddy take it midway. Assuming the volume is too huge to monitor Godaddy legal should have their people watch auctions that go above a certain amount (say USD 200 or 500) and the lesser ones would just be collateral damage for the buyer who risked it (stupidly or naively me thinks).

best,
Anita

NikeShoes ?
you can't come up with a more infringing domain I guess

but for " not well known trademarks "
thats the discussion

only a certain use will be an infringement


they could use apple.com for computers
but not for music as thats trademark of the formerly well known beatles
problem started when they sold mp3 on itunes

---------------------
I am no lawyer
no legal advise

 

[Amphibia07]

But how many UDRP's are actually successful? What happens if they get multiple UDRP's from multiple unrelated parties claiming the same domain? Whom should they then award the domain to? Or leave with original holder?

I mean, if GoDaddy decided to put notifications on every UDRP claim received, some bidders could use UDRPs as a price lowering tactic to discourage other legitimite bidders. 95% of cases are probably grey area, like bidding for first person names, or general keywords, even invented words, shared among many companies. Then I would thikn GoDaddy simply does not want to get involved in administrating all of this, when none of that would have legal effect anyway.

Plus its highly doubtful anyone would bid 10k on NikeShoes.com, SamsungPhones.com or TeslaCars or anything like that. Whom would you sell the domain later? To Ford, which would try sell Fords as Teslas, and hope customers won't notice.

 

[WebSolutions.GA]

I mean, if GoDaddy decided to put notifications on every UDRP claim received, some bidders could use UDRPs as a price lowering tactic to discourage other legitimite bidders. 95% of cases are probably grey area, like bidding for first person names, or general keywords, even invented words, shared among many companies. Then I would thikn GoDaddy simply does not want to get involved in administrating all of this, when none of that would have legal effect anyway.

I believe that the OP was not trying to include every frivolous attempt, but, that GoDaddy should self police in the event that a verified TM holder files a notice of intent.