Can you sell trademark domains if the trademark isn't globally recognized?

Discussion in 'Legal Discussion' started by Grilled, .

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  1. Grilled

    Grilled Be the change you want to see in the world VIP

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    I'm wondering if you could sell a domain such as Segway . tld?

    I was informed that it wasn't globally recognized, therefor it could be sold.

    This is interesting, because I thought if a domain had a trademark, you couldn't sell it. When I googled segway definition, google included that it was a trademark.

    If it is not a globally recognized TM, then you am allowed to sell a TM domain?

    upload_2017-11-21_3-31-4.png

    Thank you in advance.
     
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  2. Jurgen Wolf

    Jurgen Wolf Top Member VIP

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    Any domain can be sold.
    It is only question of price.
     
  3. MrConor

    MrConor ObrienDesign

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    I have burberry.eu.com - No trademark issue?
     
  4. jberryhill

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

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    You were misinformed.
     
  5. Grilled

    Grilled Be the change you want to see in the world VIP

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    @jberryhill - Thank you for the quick response! I really appreciate it!

    @Ategy.com -- I know you weren't the one who informed me that it was OK to sell a trademark domain as long as it wasn't globally recognized, but I think you will find value in knowing that I was misinformed in regards to this particular issue.
     
  6. forge

    forge n/a VIP

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    Not another #!&[email protected] trademark thread, for the love of all that is good and holy!
     
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  7. Grilled

    Grilled Be the change you want to see in the world VIP

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    Apparently not everyone is informed.
     
  8. Ategy.com

    Ategy.com Upgraded Member Gold Account VIP

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    Let me start with my usual pre-amble in that I am not a trademark lawyer .. I do have an active interest in trademarks and such and have informed myself a bit in these regards .. but for a absolute definitive answer legal council should be sought ..

    Now with that out of the way .. lol .. let's continue with my opinion ...

    First of all .. there is nothing illegal with selling any domain as far as I know.

    What is illegal is actively using that domain is it is a trademark in some way so as to gain from the trademark holder.

    Meaning that if you advertised "Segways" at the domain "Segway.whatever", in a market where the "Segway Inc" sells "Segways" .. then you are infringing on their trademark.


    That being said .. if you invent a new product in one of the trademark catagories other than whatever category "Segways" falls into .. then usually it's perfectly fine to own, use, buy or sell the domain.

    It isn't completely black and white however. Specific made up words do tend to have stronger trademark rights (I couldn't tell you the actual legal reason). For example "Microsoft" would be harder to justify owning than "Apple".

    Generic words are pretty hard to enforce . again .. as long as you aren't using it in the same context or category as someone before you.

    Segway actually is a generic word .. without looking at the dictionary it means to "shift into" ... ramps off the highway are known as "Segways" because you're transitioning off the highway. So while you couldn't use Segway to sell "Segways" or likely even scooters or probably even skateboards .. you could use "Segway" as your brand name for sex change services .. or anything else completely unrelated.


    Very important to keep in mind ... "Globally recognised" is in itself a term that depending on the mark, could be very subjective. Even "Globally" isn't really accurate. Trademarks generally are country/region specific .. although it could certainly be valid that some marks are recognised in pretty much all regions and essentially be "globally" enforceable.
     
  9. jberryhill

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

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    No. You are thinking of "segue".

    "Segway" is an invented term which is a trademark for only one thing. Period.
     
  10. Ategy.com

    Ategy.com Upgraded Member Gold Account VIP

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    Ah .. don't worry .. lol .. Grilled and I were having a let's call it "engaging" discussion here regarding a different matter.

    In that thread he probably saw that I had just sold Segway // dot // co in a portfolio that was displayed quite prominently in my signature.

    As such he was likely just trying to be helpful by publicly calling into question the validity of my sale and then tagging me and ... well .. I think the quote says it best ..

    Anyhow .. definitely don't take my word for it .. consult a lawyer .. if you own a domain like this and you plan on selling or marketing scooter type products.
     
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  11. boker

    boker Active Member VIP

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    Perfectly agree with you, I'm not a trademark lawyer, but I can use common sense to and I have my opinions regarding TM and globally recognized brands. There are out there general terms with TM in a particular country and for a particular industry and the very same general terms are trademarked by other companies in other countries for the very same industry. Also, there are terms which have become general recognized and became harder to defend the TM rights. For example, 'jet ski' was trademarked but there are hundreds if not thousands of companies using the term in their name, some of them even bought the domains over 10 years ago without nobody asking them about their rights, the term is seen as synonym with personal watercraft and the same could be said about others, like 'jacuzzi', 'ping-pong', 'q-tips', 'taser', 'scotch tape' and others. For example, I own motorkite, which was patented in 1907 as a flying machine, but because it was adopted as a noun with the meaning of 'flying machine', it's not recognized anymore as a TM. Also, what USPTO consider a TM infringement could be considered the other way by other national patent and trademark offices from another corner of the world...there were some cases where big companies could not protect their recognized US TM rights in other countries.
     
  12. forge

    forge n/a VIP

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    He who play with TM may be subject to a bit more than...

    [​IMG]
     
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  13. boker

    boker Active Member VIP

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    'Ping-pong', 'jacuzzi' 'jet ski' are also invented terms with TM for only one thing, but it will be hard to defend these days when thousands of companies are using them for exactly the same thing. If the terms get adopted by everyone it could become a proper noun meaning 'electric vehicle with two weels' and the trademark rights could not be recognized anymore.
     
  14. jberryhill

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

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    And if dogs meowed and chased mice, they'd be cats.

    VERY RARELY, through failure to police, a trademark can be lost. "Segway" is nowhere near that. It is generally useful to address facts in this reality, and not some alternative one.
     
  15. boker

    boker Active Member VIP

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    It seems to me or you are a little to aggressive for a casual talk on a forum? I know who you are and I respect you're experience, but you are acting like nobody else has the right to say anything else, just you have this right. You want to tell me that in the hundreds or thousands of TM issues you were part of, you were always right? If me, an amateur, can find in a quick search through google 40-50 or more brands that could not be defended anymore because they were adopted as basic nouns, for sure there are much more others and that there will be more brands in this situation. For example,if Segway doesn't have TM rights In China( they don't care if you have TM rights in US) and the other 200 or so countries and if I will apply for a TM rights in China tomorrow, in a few months I will have TM rights there for Segway as an 'electric vehicle with two weals' , without Segway Inc from US to not be able to do anything afterwards, if the TM is granted. I don't intend to do so, but it's just an example as each patent and trademark office from each country has his own view and laws regarding a TM. I can tell you for sure that in some countries I can delay anything by up to 10 years in civil courts, without any TM rights to be able to stop me from using it and even after 10 years in lots of cases the TM right owner recognized by USPTO will not have any rights there.
     
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  16. jberryhill

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

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    It's words on a screen. You, I, or anyone else can disagree with them.

    In a domain dispute with Segway over a "segway.tld" domain name, Segway is going to win.

    In the context of this forum, where it is obvious that there is no shortage of folks who have the first clue what they are talking about, it isn't particularly helpful (in my opinion, with which you are free to disagree) to go on about absurd hypotheticals or improbable edge situations which aren't relevant to whether Segway needs a trademark registration in every country on earth in order to win that dispute.

    For a question like:

    ...it is plainly obvious that winning a domain name dispute does not require a "globally recognized TM".

    Hey, maybe your name is Joseph Segway, and you are using the name for your personal website. If so, great. But that is neither the question nor the facts here.


    ...which is also ill-informed, since the probable course will be for Segway to apply to cancel that registration, as they have done successfully in quite a few countries in which people have tried that.

    But, in point of fact, they wouldn't even have to do that since it's been registered in China since 2002:

    App/Reg No
    3193591
    Nice Class
    9
    Filling Date
    2002-05-30
    Registered Date
    2003-08-07
    Protection Term
    2013-08-07--2023-08-06
    Current Status
    Renewal finished
    Owner's Name
    SEGWAY INC.赛格威公司
    Owner's Address
    14 TECHNOLOGY DRIVE,BEDFORD,NH 03110,UNITED STATES OF AMERICA美国新罕布什尔州贝德福德市技术路14号

    They have six other "SEGWAY" marks registered there, in addition to that one.

    You certainly have the "right" to say that Segway doesn't have trademark registrations in China. The facts are that they have a bunch of them.

    Does running off to some obscure jurisdiction to obtain paper trademark rights work as a defense in domain disputes? No.

    http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0822

    One matter which has given the Panel cause for pause, is that the Respondent apparently still held a registered DURACELL Community Trademark, in respect of goods in International Classes 32 and 33, when the Complaint was filed. However, in Madonna Ciccone P/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847, the panel said:


    “It would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy… To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered…”


    Similarly, in Beca Inc v. CanAm Health Source Inc., WIPO Case No. D2004-0298, the panel confirmed that a UDRP panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent for the purpose of assessing that respondent’s bona fides under the UDRP. While the mere fact that a trademark has been applied for or obtained by a respondent may in appropriate cases be a highly relevant consideration, such fact of itself is not an absolute bar to a complainant succeeding in appropriate cases under the Policy.


    The Madonna and Beca cases were followed by this Panel in Uponor Oyj and Uponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd, WIPO Case No. D2008-0209.


    In this case, the available evidence shows that the Respondent, and others who may have been involved in marketing the “Duracell Energy Drink”, have been trading off the Complainant’s goodwill in its DURACELL mark. Indeed, the Respondent’s founder appears to have acknowledged as much in the statements which were attributed to him by the “www.hoteliermiddleeast.com” website. Such circumstances fall a long way short of demonstrating that the Respondent’s registration of the DURACELL Community Trademark was “obtained in good faith for the purpose of making a bona fide use of the mark” (to borrow from the language used by the panel in the Madonna case; although in that case the relevant trademark had been obtained in Tunisia as opposed to the Community TM registration at issue in the present dispute, the principle is apt). Furthermore, the Complainant has applied to invalidate the Respondent’s Community Trademark registration, and it appears that the Respondent has not opposed that application. Nor has the Respondent provided any answer to the Complainant’s bad faith allegations in this proceeding.

    Yeah, you can. By the same token, if we are talking about a .com name for example, the TM claimant can bring a suit in Virginia, where the registry is located, and the Virginia court isn't going to care about your stalling suit elsewhere. That has been done multiple times before. Here's one example of that in action:

    https://law.justia.com/cases/federal/district-courts/FSupp2/250/610/2381296/

    On April 9, 2002, Park filed an application for an injunction in the District Court of Seoul, Korea, requesting that court to issue an injunction prohibiting Hangang from transferring the domain name as ordered by this Court. The District Court of Seoul provisionally granted this injunction by order dated September 17, 2002, finding that this Court likely lacked jurisdiction over the matter.[11] In light of these proceedings and the Korean court's order, it appears that Hangang has refused to transfer the domain name as directed by Order of this Court. GlobalSantaFe, therefore, now seeks by motion a second amended judgment, which not only directs Hangang and VeriSign to transfer the domain name, but additionally directs Veri-Sign, the registry, to cancel the infringing domain name pursuant to the ACPA until the domain name is transferred to Global-SantaFe.

    Bottom line: US court, where the registry is located, didn't give a sh*t about the Korean court order.

    But the OP isn't asking about applying for trademark registrations in various places, litigating in slow jurisdictions, or other schemes which have been attempted and failed in relation to well-known marks.

    You are certainly free to disagree as you see fit, and I'm just as free to respond as I see fit.
     
  17. jberryhill

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

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    I mean, come on, when this is posed as a serious question:

    ...then I just don't think that hypotheticals with unusual facts are appropriate to the level of the discussion.
     
  18. boker

    boker Active Member VIP

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    So,
    Segway was an example, I was referring to most brands that don't have TM rights for their names in China or other countries.

    TM rights are not just for .com, they could use any cctld for example. In this case Segway have applied fot TM rights in China, but let's say that example.com have TM rights in US but not in China for a certain product. Anyone could apply for TM rights in China and after they are accepted, there are 3 months for others to contest, after that nobody can't do anything. Also, you can contest a TM in that 3 months period just if your product is well known in China, not everywhere in the world, so if consumers in China don't know your product you will have big issues contesting a TM. After the 3 months period, the person who applied for chinese TM could start selling exactly the same products with exactly the same name( using .cntld) and he could stop you by entering chinese market using that name. The big question is if they will start selling outside China and you will have on the same market two companies, selling the same products with the same name, one with US TM rights one with China TM rights, who will be aloud to sell there and under which name?
    Regarding .com, it's true that for now they use US courts to settle issues, but I don't think that this will last more than 2-3 years. In 2016 was a big issue and France, Russia, China but others EU countries and arab countries have forced ICANN to change and they will force everything until .com will be under international laws and not US laws, most of the guys connected to this issue are saying it will happen before 2020, so everything will change when .com will be truly international.
     
  19. Grilled

    Grilled Be the change you want to see in the world VIP

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    @Ategy.com - Thank you for noting that I am trying to be helpful. That is my underlying intent here.

    Here's the thing, it doesn't appear that you had just sold Segway // dot // co. According to: https://www.namepros.com/threads/12-domains-7000-estibot-60-years-2-4m-exacts-generouslover-com-androidworld-org-metrix-co.1050753/ it looks like the auction is still live (though close to closing) and you are actively selling segway // dot // co on NamePros. I appreciate the fact that you are donating 20% of the proceeds to help the Lyons, and empathize with you raising vet bills for little steamie [get well soon steamie!] And with that said, I would have considered bidding, however, after noting the sale would have include a trademarked domain, I did not want to [bid up] or validate the sale of a trademarked domain on NamePros. Earlier this month, I notified a member was selling a trademark domain, and immediately the cancelled their auction, and emailed the trademark owner offering to relinquish the domain free of charge. I'm not a lawyer, but in good faith, I would recommend you to do the same [or just delete / don't renew the domain / don't park segway ads].
     
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  20. frank-germany

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

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    I know Segway
    so its obviously a globally recognised TM

    as I am living on the other side of the globe

    if someone form australia knows SEGWAY
    then we have covered the globe , right?
     
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  21. frank-germany

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

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    but to answer your question
    of course you can sell a trademarked domain

    but you can't ( don't want ) do outbound to the TM owner


    there are domain names that apply to multiple different trademark owners
    only one of them can own it

    I can apply for a trademark that matches my domain, too
    just in a different "class" that has not been covered yet

    owning a domain is just the beginning
    nobody knows what you are going to do with it
    unless you put content on it


    -- no lawyer--
    just my opinion
     
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  22. jberryhill

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

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    Not at all. The ICANN transition has nothing to do with the fact that Verisign - the .com registry - is located in Herndon, Virginia. It's not going anywhere, and they remain within the jurisdiction of the US District Court for the Eastern District of Virginia (EDVA). If the EDVA issues an order to Verisign to transfer a domain name, and Verisign doesn't transfer that domain name, then folks are going to get marched out of the building in handcuffs when push comes to shove.

    A domain registry is always going to be subject to whatever court has jurisdiction over it. That has nothing to do with the US government ending the IANA contract with ICANN.
     
  23. BaileyUK

    BaileyUK Established Member

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    It's a real worth-while learning curve for anyone investing in domains - Sure it looks and reads boring for anyone that just wants to go with their intuition on a simple domain registration. Sooner or later though your going to have to play catch-up, particularly when you have to respond (or even be aware) of your domains listing conflicts (I'll be honest and admit I don't look until I've received a x,xxx offer)

    But lets face it, there's more clear TM infringement domains posted for sale then there is questions about TM infringement. (namepro admin do a good job on listings here) It's only boring to those that couldn't care-less and probably would play the innocent. So not a serious domain investor with anything more than a $100 bet at best.

    The legalities of holding/selling a particular domain term should interest anybody looking to operate in the xx,xxx range. Indeed any contact potentially leading to a sale. Look for the benefits of that contact where the ground lies for negotiation etc, You can't do any of that without a basic understanding of potential TM infringement. And equally understanding those chancing their TM arm (Yep I've had those to, without a loss)
     
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  24. Ace3coiner

    Ace3coiner DubaiLodge.com; neoprene.org; pruh.org; gazy.org;

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    To digress a little bit, any opinion here about my TM domain name? Given that the original TM owner has only registered the DN in .de. Please educate me.

    Picaldi.com

     
  25. BaileyUK

    BaileyUK Established Member

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    Private message/chat me their contact email or wording of a letter contact
     
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