Dynadot

Can a person's name be trademarked?

Labeled as question in Legal Discussion started by domaincapitol, Oct 24, 2018.

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  1. domaincapitol

    domaincapitol Upgraded Member Gold Account

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    Hi all

    Would like to know if registering some other person's name is against the law and falls under cybersquatting?
     
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  2. Branko Jovanovic

    Branko Jovanovic Established Member

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    Not 100% sure, but I think that it depends if there is a trademark registered that is completely identical to the domain name you want to register then you will have infringement issues with your domain name.

    Similarly, social media websites such as Facebook reserve the right to reclaim usernames on the website if they infringe on a trademark, as an attempted to curb cybersquatting.

    As with most domain names, if you have registered a domain name before it was made into a trademark, then your domain registrar company should protect your domain ownership. The company which would want a claim on such domain name would have to offer a monetary compensation for the transfer of the domain ownership.
     
  3. domaincapitol

    domaincapitol Upgraded Member Gold Account

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    Thank you, Branko!
    That was the quickest reply I've gotten here:)
     
  4. Rob Monster

    Rob Monster CEO, Epik Epik.com Staff PRO Gold Account VIP

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    You can add a TM to your string or add verbiage in the footer of your site indicating that RobMonster.com is trademarked, for example.

    As to whether a regulator such as USPTO will issue TM on a .COM, the fact is that they have. Amazon.com is a registered trademark. Which means RobMonster.com can be a TM as long as it is not confusing similar to some other registered mark.

    In other words, someone with a generic name like John Smith might have a hard time getting a trademark for John Smith because many exist already:

    upload_2018-10-24_6-45-31.png

    However someone could still get a TM JohnSmith.com.

    Epik is planning to make more progress in providing registrants with more comprehensive brand protection solutions. Some people know that I am Chairman of Patents.com. The key will be to make something that makes it is easier to buy, sell and lease these trademarks. That is really the missing breakthrough. We do it with domains but for TMs this is relatively novel. More to come there.

    Rob
     
  5. domaincapitol

    domaincapitol Upgraded Member Gold Account

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    Rob, what if John Smith has no trademark and there aren't any business remotely linked to the name? Would a person be able to register johnsmith.com if it's available without being on the wrong side of the law?
     
  6. DnameAgame

    DnameAgame BrandPlease.com, see [email protected] BuyNa.me Gold Account

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    Whats really important to think about in a TM situation:
    1. Are you developing a site? Is it anyway related to the TM? Meaning the TM'ed line/s lines of business. If not use it - (get real legal plz)
    2. as in investment, is is worth the headache?
     
  7. Rob Monster

    Rob Monster CEO, Epik Epik.com Staff PRO Gold Account VIP

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    I believe absolutely yes.
     
  8. domaincapitol

    domaincapitol Upgraded Member Gold Account

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    Thanks a ton, Rob:)
     
  9. domaincapitol

    domaincapitol Upgraded Member Gold Account

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    Thanks!
     
  10. xynames

    xynames XYNames.com PRO VIP

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    Think, Jenny Craig. The trademark has to do with the name’s use in commerce, whether that name is a person’s name or not isn’t the issue.
     
    Last edited: Oct 24, 2018
  11. Rob Monster

    Rob Monster CEO, Epik Epik.com Staff PRO Gold Account VIP

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    The topic is very timely.

    Epik is making a global push towards Permanent Digital Identity. Forever Domains. I spent much of the last 4 days at ICANN building a groundswell of multi-stakeholder support for this including building the case that ICANN should approve a one-off $10 ICANN fee for registrar and registry to buy out the Freehold.

    Very important topic. See PR that is just now going out:

    https://epik.com/blog/forever-domain-registrations.html
     
  12. viniproject09

    viniproject09 Upgraded Member Blue Account

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    You need to make sure its not copyrighted. All I suggest to consult a professional legal advisor.
     
  13. urlurl

    urlurl Active Member VIP

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    celebs and famous sports athletes have an excellent change getting their names back. best to avoid
     
  14. Rob Monster

    Rob Monster CEO, Epik Epik.com Staff PRO Gold Account VIP

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    If you have one, set up a fan site and have it run by an actual fan. It is a legit use for a celeb domain. And worse case you hand over the domain to the celeb. I met celebs this way. No regrets.
     
  15. NameDeck

    NameDeck Established Member

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    Didn't know you offered this. Interesting concept and approach.

    What if you reg a domain for forever @ epik and your company goes bust? $400 is like 40 years of registration (give or take). It's not that I don't have faith in you and your company but there's quite a few that don't make it to that point :)
     
  16. Rob Monster

    Rob Monster CEO, Epik Epik.com Staff PRO Gold Account VIP

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    I look at it differently -- it is a small price to have a customer for life. Retail customers don't just need domains. They need hosting, SSL, email, development. When they sell a domain, we become the after-market for that domain since it comes with a forever registration. I am not crazy.
     
  17. FolioTeam

    FolioTeam Established Member

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    For most countries, you can't trademark your personal name or someone else's. There are exceptions though. For example, the USPTO says you can't unless

    1. You use your personal name in commerce, or have an intent to use it in commerce.
    2. And the name won't be confused for a previous mark. Hence, common names like John Smith may not fly.

    Now, celebs like Morgan Freeman and Julia Roberts can trademark their personal names because that's their brand.

    Having said that, it's generally a bad idea to register someone else's name both as a domain name or as a trademark (without proof of use in commerce). The former will likely get you into a UDRP soup (not the tasty kind) and the latter won't even pass the approval stage of the registration process.

    So tread with caution.
     
    Last edited: Oct 24, 2018
  18. NameDeck

    NameDeck Established Member

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    Good point. And from a client perspective it would make sense. Most end-users don't care about all the hassle that comes with managing domains, hosting etc.

    Anyway good to know you offer this as although it's not something I would opt for at the moment I know for sure I'll encounter clients who are gonna love this!
     
  19. frank-germany

    frank-germany F1lter.com xpired domain search engine Gold Account VIP

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  20. benjatd

    benjatd Established Member

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    Rob @Epik.com

    What I hear you say is that you intend on pursuing ways of limiting domain options and the bottom line @EPIK, while increasing revenues at Patents.com.

    I'm all for limiting trademark infringement, but who made the registrars the police all of the sudden. Even if some corporation has a standard character mark in "every category" (not possible) there is still a large possibility nothing happens or they don't win the infringement suit. So, they probably go running to ICANN, which goes running to the registrars. My guess is they are shoving this down the registrars throats for the mere fact that corporations have been very unsuccessful in fighting infringement against the little guy.

    There are plenty of big issues that ICANN needs to deal with, which clearly come ahead of this IP hype.


    -bd
     
    Last edited: Oct 26, 2018
  21. Domain Galleria

    Domain Galleria Established Member

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    If my name is Ronaldo, does it mean Christiano Ronaldo can take ronaldo.com away from me?
    :xf.smile::xf.smile::xf.smile::xf.smile::xf.smile::xf.smile:
     
  22. hookbox

    hookbox Active Member VIP

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    A name like JohnSmith.com is so generic and so widely used by thousands and thousands of people that you can easily register this name with no issues. If you register a name like TomCruise.com then get ready to hear from his lawyer. Simple rule: Generic names no problem. Unique names big problem.
     
  23. benjatd

    benjatd Established Member

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    Well at the end of the day, you are all correct in your recommendations of it not being a good idea. If you don't want the headache, don't register a domain with potential conflicts. That being said, most of the case law sides with the domain owner, based upon hard to prove intent.

    At first glance I found 13 cases, all siding with the domain holder. The domain holders are the ones winning in court and there is a bunch of case law behind them, unless of course they are committing extortion. It seems the lawyers have infiltrated the ISPs because they cannot win in an equitable court of law. The next question is, do the ISPs need to be put in check for undue regulation and limitations of constitutional rights. Most likely it would full circle back to intent and we would learn some really interesting things in discovery.....

    "A gripe site that incorporates a company's entire trademark into its domain is still protected under the First Amendment, a US District Judge has ruled. In the case of Career Agents Network v. careeragentsnetwork.biz, the judge said that the gripe site made no effort to bolster its own business and was noncommercial, therefore protecting it from Career Agents Network's trademark claims and cybersquatting accusations."

    ////cases//////

    /////
    Lucas Nursery and Landscaping, Inc. v. Grosse

    Defendant used domain name to host a
    legitimate, critical, noncommercial site.

    Sixth Circuit found no bad faith intent to
    profit, only good intentions to educate other
    consumers about her experience.

    ////////
    Taubman Co. v. Webfeats

    “[T]he domain name is a type of public expression,
    no different in scope than a billboard or a pulpit, and
    [the defendant] has a First Amendment right to
    express his opinion about [the plaintiff], and as long
    as his speech is not commercially misleading, the
    Lanham Act cannot be summoned to prevent it.”

    //////
    Bosley Medical Inst. v. Kremer

    Former patient created website
    bosleymedicalviolations
    to criticize past
    service by the company

    Multiple claims (infringement, dilution, Lanham Act
    anti
    -dilution)

    NO liability under the Lanham Act
     
    Last edited: Oct 26, 2018
  24. benjatd

    benjatd Established Member

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    Also I would like to acknowledge rob @Epik.com for his tasteful response to taking some heat earlier this morning. In an even keel and dignified manner, he simply just liked a post. That is seasoned CEO behavior, nice job rob. +2pts
     

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