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

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Chris Hydrick

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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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The views expressed on this page by users and staff are their own, not those of NamePros.
All depends on likelihood of confusion and good versus bad faith use, assuming that the TM is valid in the venue where the domain is registered / used. Beyond that, pay a professional or expect that the free advice you get might be worth what you pay for it.
 
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Explain to me in legal terms why you can't?

read the previous posts or search archives. i doubt someone will waste an hour to write it again...
 
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If mcdonalds drop their domain name and I register it and start a "NEW" company using that domain name in a business that is unrelated to theirs.... they can't do anything

Say McDonalds forgets to renew and a name expires. If they want the name back, because they screwed up and you want to argue it, good luck.

You can spend all the money you want to argue it in court.
 
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Even when using a trademarked name in the area of the trademark, things aren't clear cut. The trademark owner has the power to protect it as they see fit.
I had a small site with "apple" in the domain for some years, offering upgrades, repairs & servicing for Mac computers. I wasn't an "Apple Authorised Service Provider", and made it clear that I wasn't affiliated to Apple Inc. I also stated that for "in warranty" repairs the user should contact Apple, and I provided a link to Apple's own service page.
I'm sure Apple was aware of my site, but I think they saw that it was just a local guy fixing their "out of warranty" Macs.
The issue with what you did was you used their likeliness to make money. Whether you did or not, that is how they got you. I use to hire an art studio/design agency with the word apple in their domain for years. And they are still up and running with no issues.

If you use apple in your name and make money without using "Apples likeliness" you will be ok.

The Beatles sued Steve Jobs about "apple" because he made a big mistake by telling the world he chose the apple name because of his love for the Beatles. :)
 
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I have burberry.eu.com - No trademark issue?
 
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Not another #!&$@ing trademark thread, for the love of all that is good and holy!

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 ..

@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.

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

 
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No. You are thinking of "segue".

"Segway" is an invented term which is a trademark for only one thing. Period.
'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.
 
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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.
So,
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.
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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.
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.
 
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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.

@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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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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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.

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.
 
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Not another #!&$@ing trademark thread, for the love of all that is good and holy!

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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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

 
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Private message/chat me their contact email or wording of a letter contact
 
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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
You can start another thread for that. This discussion really isn't the place.
 
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No problem -I was just trying to be helpful
 
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so much ink spilled...geez. Stay out of trademarks, especially made ones.
If you have apple.com and want to talk about apple, the fruit, you can do it if you are careful. But best to hire a lawyer to sell it to Apple...a minefield.
 
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TMs are a minefield and NPs is great to get advice and help from others. This leads me into this....

Someone on here is trying to sell a small portfolio for $300 - I commented that some of the domains are definite TMs of an absolutely massive global company and the the NPs mods removed my comment...

''comments are not allowed in sales threads / thank you for understanding''

I don't think this was right - we should be able to comment and warn others. My comment was a one line, something like...

''Definite TM issues with BAE domains''

And the portfolio is still for sale.
 
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a Trademark is not an international LAW !

Coffee has more than 800 trademarks
even the email sign @ is trademark

a Trademark is an Invention from People to misuse other People !
 
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a Trademark is not an international LAW !

Coffee has more than 800 trademarks
even the email sign @ is trademark

a Trademark is an Invention from People to misuse other People !

Do your think I can get away with "Ripple+word" domain names? I was just worried Ripple as a crypto has trademarked this name?
 
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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?

Show attachment 73554

Thank you in advance.
Trademarking "Segway" and "Segway.com" is 2 different things. If someone trademarks Segway, that means that you can buy Segway domains and sell it.

A good example of a "SMART" company who did it the right way is Priceline.com. If you look up their trademark you will see that they trademarked "Priceline.com"

If mcdonalds let their domain expire and you scooped it up. Then decided to use the name for a computer software, the hamburger company can't do anything.....
 
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I have been reading cases where the udrp is snatching alot of domain names from people. I wouldn't be surprised if people start suing them personally and winning in federal court!
 
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