Can I sell the initials of a company to them without getting into trouble?

[pablohc86]

in few hours it is expiring TDEC.net

i've seen some company like

tdecinc.com
tdec.com.br
tdec.fr
tdec.pl same as tdec.eu

also TDEC got around 1k exact match on adwords (i guess it is for the gov department of tenessee)

there is no TM registered for all those company from my research but they are enstablished business, for what i know it is forbidded try to sell a domain with a TM to the TM owner.
In this case i would not know what is allowed or not!

from my side i think it is forbidden do a similar choice especially in the USA where there is a big knowledge that TDEC could be easily confused as: Tennessee Department of Environment Conservation

obviously i'm not interested on purchase it for this kind of sale, i'm only taking this example because it is a real one in order to understand better.

obviously the best answer would need an attorney but i like to hear what more experienced people think.

thanks

 

[pablohc86]

anyone?

 

[biggie]

personally, i think if they have .com already, i doubt they would .net

but i'd rather "them" approach me with an inquiry, as opposed to me approaching them in that situation.

it gives you more leverage and some protections.

imo...

 

[pablohc86]

personally, i think if they have .com already, i doubt they would .net

but i'd rather "them" approach me with an inquiry, as opposed to me approaching them in that situation.

it gives you more leverage and some protections.

imo...

i totally agree with you..
the sample is just to keep things easier to see but what i'd like to know is if a similar outbound mail is illegal.
With some time passing from when i opened the thread and lot of research on it i think that a big point that could change things in my favor is if can demostrate to have a real interest in that name.
Reg similar names with the intention to only sell it to an enstablished biz (also with no TM) it is risky.
Do you agree?

 

[biggie]

Reg similar names with the intention to only sell it to an enstablished biz (also with no TM) it is risky.
Do you agree?

since "intent" can be regarded much like "possession" in a drug case, i'd say it could add weight in deciding an infringement case, even if they have no tm, but have used the term for a duration prior to your registration of that name.
thought that scenario may be rare, in comparison to others where a tm is involved, by waiting for offers rather than soliciting them, it's a risk you may not have to deal with.

imo....

 

[Kate]

In addition to what Biggie said, I think it is tricky because you'll find yourself trying to sell TM holders their own TM, in a different extension. A TM doesn't have to be registered, to accrue TM rights.

What can happen is angry replies from your leads, saying you are bottom feeder who profits from their name and goodwill. And they will most probably be right.

Another thing to consider: if none of the possible end users you've identified buys the domain, can you use it ? A good domain name should have a large pool of potential end users. On the other hand, a domain name with only one 'obvious' end user is usually not a good domain.

 

[pablohc86]

In addition to what Biggie said, I think it is tricky because you'll find yourself trying to sell TM holders their own TM, in a different extension. A TM doesn't have to be registered, to accrue TM rights.

What can happen is angry replies from your leads, saying you are bottom feeder who profits from their name and goodwill. And they will most probably be right.

Another thing to consider: if none of the possible end users you've identified buys the domain, can you use it ? A good domain name should have a large pool of potential end users. On the other hand, a domain name with only one 'obvious' end user is usually not a good domain.

thanks for the reply.. but as you can see in my example:

1)there is not TM regged for that word, acronym;
2) there are multiple possible endusers;

for that reason i've started this thread.
If a TM was filled, all would be easier because i'm sure 100% that is not possible do outbound outreach without having troubles

 

[Kate]

1. As I said, just because a TM is not formally registered, doesn't mean it doesn't exist de facto (through usage). In the US there is the concept of common law trademark I think. In other countries too.
2. Multiple end users maybe. But it doesn't change the fact that you are contacting them, and they can still claim TM rights for themselves, regardless of the possible rights of other potential end users...

To put it differently, you cannot exploit the multiple end users argument as an excuse to 'dilute' their TM rights.
This defense won't get you much sympathy in UDRP
https://www.namepros.com/threads/fe...-com-transferred-at-udrp.875581/#post-4979753

PS: this is not legal advice of course

 

[Kate]

Here is one very relevant UDRP decision that was just released, and that touches on the issue:
The domain name: Bart.net

Some excepts from the decision (emphasis is mine):

B. Respondent

- Respondent has been buying and selling domain names composed of common or generic terms for at least fifteen years. Bart is a proper noun that is short for the ancient name, Bartholomew.
- After acquiring the disputed domain name, Respondent contacted several potential buyers, including Complainant, who was identified after Respondent discovered the website connected with <bart.org>.

And yet:

However, the Panel concludes that many of those prior Policy panels, while acknowledging the purchase and resale of domain names as generally legitimate, require that in each case the specific disputed domain name must be examined relative to that general practice to determine whether rights or legitimate interests obtain in that name.
...
("...the issue is not simply the legitimacy of Respondent’s business model, but whether it has a legitimate interest in the disputed domain name itself."); see also Austin Pain Ass'n v. Domain Admin, FA 1536356 (Nat. Arb. Forum Mar. 18, 2014) ("...the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.").

The defendant lost.
Link to ruling: http://www.adrforum.com/domaindecisions/1633388.htm

To get back to the original question, when I say: dangerous
you know why

 

[pablohc86]

Here is one very relevant UDRP decision that was just released, and that touches on the issue:
The domain name: Bart.net

Some excepts from the decision (emphasis is mine):


And yet:

The defendant lost.
Link to ruling: http://www.adrforum.com/domaindecisions/1633388.htm

To get back to the original question, when I say: dangerous
you know why

Thanks for this information but the biggest difference from my question is that i was talking about a company that have no TM filled.
However reading the case i had a great understanding of the situation.
thanks for bring this case to my attention!

 

[Kate]

If you have a TM you can build a stronger case at Wipo.
But what matters is whether you are "widely known" by the acronym/name that is at dispute.
You could win if your website/business is 'notorious' enough.
Many UDRPs have been won by complainants that have no registered TMs.

 

[Compassion]

Here is one very relevant UDRP decision that was just released, and that touches on the issue:
The domain name: Bart.net

Some excepts from the decision (emphasis is mine):


And yet:

The defendant lost.
Link to ruling: http://www.adrforum.com/domaindecisions/1633388.htm

To get back to the original question, when I say: dangerous
you know why

I have filed a reverse hijacking lawsuit against the multi-billion dollar entity attempting to steal this generic name! Domain is still in my account.