NameSilo

Consequences of Registering Trademark Domains

Located in Legal Discussion, started by snowbird, Dec 11, 2012

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  1. snowbird

    snowbird Emperor Penguin VIP ★★★★★★★★★★

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    It is great to see so many new members wanting to become involved in the NamePros community. Welcome to the world of domaining!

    However, there seems to be some confusion among new members about whether or not it is ok to register domain names with trademarks in them.

    The general quick answer here is NO, it is strongly advised that you do NOT register a domain with a trademark in it. The whole idea for a company to have their brand names trademarked is so they can protect their brand's reputation and profits.

    While it may be possible to register domain names with "Microsoft®" or "iPad®" in them, it is important for you to know that domain registrars and registration providers do not police what you register. It is up to the person registering the domain name to know which domain names are ok to register.


    Consequences:
    If you register a domain name with a trademark in it, you will be faced with the risk of possibly losing that domain name to the company who owns the trademark through WIPO arbitration initiated by the trademark holder. If the trademark holder also believes you have been profiting off their brand name or have effected their reputation in any way, a lawsuit may also be filed to reclaim lost profits and for recovery from damages you may have caused their company.

    The only exception to these consequences would be if you registered that same trademarked name for use in a different industry. In that situation, the name is expected not to be confusingly similar to the other company's trademark. For example a trademark can be registered for a computer software company, and by someone else who may be utilizing that same trademarked name to sell swim wear. As long as it is clear that the name is being used for non confusingly similar industries, you should be alright. This typically works out for companies who have lower key trademarks and are not as well known on a national or global level.

    If you currently hold a domain with a trademark in it and you do not meet that special circumstance, it is advised that you notify your registrar/registration provider as soon as possible to inform them that you would like to drop the domain.

    Howcome other people are registering domains with trademarks in it?
    If those other people jump off a bridge, are you going to do it too? Those who decide to register these domains may not know the consequences of doing so and will find out over time what might happen. OR, it is possible these people are already aware of the consequences and are comfortable with the possibility of being caught.

    But just be warned, this is an at your own risk type of thing and continuing to register these names will only promote a bad reputation for all the domainers who are playing by the rules.





    The information in this post reflects the opinions of a NamePros member and is not to be considered actual legal advice.
    All registered trademarks in this post are the property of their respective owners.
     
    Last edited: Dec 11, 2012
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. Some more information on this topic for clarity purposes.

    If you see a questionable TM violation, Please contact the TM holder and direct them here: http://www.namepros.com/legal-issue...-namepros-ip-rights-complaint-proceedure.html if they wish to police their TM they will file via that procedure and at that time we will assist them by removing their mark.

    We are in no position to make decisions on behalf of TM holders nor act as legal representation for them. Only the TM holder and their authorized litigation team can decide if they wish to police their TM's or not. Whats a TM in China may not be in USA, whats a TM in UK, may not be in Jamaica, etc.. etc.. It comes down to where the seller & the buyer are located and their intent.

    We advise everyone NOT to deal in TM's, however if they do, they should be prepared in the event a TM holder pursues litigation. Not all TM holders win such cases and the domainer is allowed to keep the domain. Since we are not a licensed litigation firm, we can't make that discussion for people, Only the TM holder can initiate such a legal proceeding.

    Please contact TM holders directly if you feel their mark is being violated by someone so they can take proper legal actions.

    A little more clarity to help out:
    • We advise that NOBODY buys TM without consulting an attorney first.
    • We advise new members NOT to register TM names.
    • We assist TM owners and or their attorneys if they contact us with a disputed claim to get the matter resolved.
    • We do NOT act like attorneys our self and try to take the laws into our own hands.
    • We advise members with questionable TM concerns to contact the TM owners so they can take the proper legal actions.

    Eric Lyon
    NamePros Team
     
  3. sadiyakhan

    sadiyakhan Established Member

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    Hello this is Sadiya Khan and i am new here i thought this is a best place for starting. I have a little information about the topic discussed here
    Your registration of this name, that is basically just like our client's trademark, is probably going to cause confusion, mistake and deception, and therefore constitutes infringement of our client's logos and copyrights, still as constituting unfair competition. Your giving the name available constitutes "cyber squatting," and violates our client's trademark and copyright rights. see able of the preceding, we have a tendency to demand that you simply in real time cancel your name registration and supply United States of America with copies of the dead cancellation documents.
     
  4. ojojames

    ojojames New Member

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    trade mark name

    I am a newbie and new here as well.
    Is it illegal to register a domain name such as ask4ipad.com?
    Please, enlighten me the more.
     
  5. Brian2011

    Brian2011 Established Member

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    So howcome it's OK for http://www.abbafund.org for example to use the word 'Abba' in their domain name and logo?

    Is it legal to use the word 'Abba' for a not-for-profit website (i.e. an ABBA fan who simply wants to share their love of the band with others)?

    What about ABBA tribute bands?

    Am I OK to even write the word ABBA on this website because it may be construed that my addition of that word on this forum may indirectly benefit the website owner because search engines could place more relevancy for this site in relation to ABBA when googlebot indexes next time?

    Hope someone can answer these questions because nobody wants to risk a lawsuit!
     
  6. snowbird

    snowbird Emperor Penguin VIP ★★★★★★★★★★

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    As indicated already in this thread, trademarks are categorized by classes. ABBAfund.org is not an infringement because ABBAfund has nothing to do with music for which the trademark has been registered. ABBA has more than one meaning. You could register ABBACars.com if you wanted for example and it would not be a violation since you are operating a dealership. It is only when you register a domain with abba in it to then go and profit off that name selling ABBA music CDs, etc. Part of a trademark suite comes the point of proving actual confusion between your site and an actual brand.

    That is like Apple. If you want to register a domain with Apple in it to sell the apple fruit, nobody is going to say boo to you. But if you start a site with Apple in it and then start selling software or computers, then there is the chance your attempting to confuse the consumers into thinking you are actually Apple who is selling computers and iphones, etc.

    Also posting a trademark in a thread here on the forum would not be an issue either since NamePros is a domaining forum and we are not selling ABBA music cds. But it is kind courtesy to recognize their trademark where it is due to remind others about it being an actual trademark. Also remember ABBA has different types of trademarks. It is not just a trademark for the music group, but is also trademarked in other classes. For example ABBA Furniture is a registered trademark for selling outdoor patio furniture. That is in no way confusing with the music group so it is absolutely fine. I hope this clears some things up for you Brian.



    The information in this post reflects the opinions of a NamePros member and is not to be considered actual legal advice.
     
  7. cbartley17

    cbartley17 New Member

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    Do you have any recourse if a company trademarks your domain name a year after you purchased the domain? Might a person or company trademark your domain name with the intention of litigating it from you in the future?
     
  8. snowbird

    snowbird Emperor Penguin VIP ★★★★★★★★★★

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    Under general circumstances in the US, if you have a domain name registered and you are using it with a live website and marketing that name as your brand, then you have already established a mark. Whether or not you choose to register it to have it legally documented is your prerogative. If someone tries to register that mark later and succeeds, they generally cannot make you forfeit your domain if you have evidence to show you have been operating under that brand prior to their use of the mark.

    The information in this post reflects the opinions of a NamePros member and is not to be considered actual legal advice.
     
  9. akhilkg

    akhilkg Established Member

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    How about domains that have celebrity names?
     
  10. sherwood

    sherwood Established Member

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    How about sports team names/mascots? ie. YankeesFanatic.com? I do not own this, but I do own similar sports team titles.

    Thank you for your clarification!
     
  11. dompro

    dompro Established Member

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    good post, may be also should be put as sticky in the domain appraisal section. So it would answer all the "please appraise my newly registered Facebook<something>.com" questions before they are even asked.
     
  12. ryankidman

    ryankidman Established Member

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    Tips shared by you in this discussion are quite practical thanks evevrybody
     
  13. RaiderGirl

    RaiderGirl Established Member ★★★★★★★★★★

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    Now if we can just convince Michael Mann to stop registering obvious Trademark domains, and denounce the practice, it would help to lessen the stereotype that Domainers are Cybersquatters.

    Great advice by Snowbird and Eric, Advice that must be hard to follow for some domainers who see successful industry leaders like Mann registering TM's and think it's acceptable.. "If he's doing it, it must be OK right?
     
  14. Ivannnn

    Ivannnn Established Member

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    Hi,

    Is 'Window Solutions' a trademark name?

    I noticed a company with that name and a small TM right after it. Does that mean the term is trademarked?

    I tried a search here but it doesn't help much. Get a ton results from Bing. Don't know what to do with it.
     
  15. sella.ca

    sella.ca Established Member

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    Put the search terms in double quotes, ie. "Window Solutions"

    I get 17 results with 4 being live and the rest dead
     
  16. Ivannnn

    Ivannnn Established Member

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    I thought of that already. But interestingly, I get no results.
     
  17. sella.ca

    sella.ca Established Member

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    Ivan, I'm not allowed to post links yet so follow my lead :)

    DO NOT use the search box in the top right corner, that searches the site, not trademarks

    go to uspto.gov
    click on 'trademarks'
    click on 'trademark search'
    click on 'basic word mark search'
    insert 'Window Solutions' in the search term field
    voila!

    If that doesn't work, then I can't help you :)
     
  18. ROUSALIN

    ROUSALIN New Member

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    AskNasa.com

    What if I registered AskNasa.com?
    What should I do?
     
  19. mkinyua

    mkinyua Established Member

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    hi all,
    what if i have hand regged a domain name only to realize later that there was a talk show being hosted with that particular name. Although the show is at its infancy, they might want to reclaim the name in future. Am i on the wrong?
     
  20. Dave_Z

    Dave_Z Electrifying Guy VIP ★★★★★★★★★★

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    Hehe, it's only now I encountered this thread. I'll share a few things I've learned since then.

    First, you're potentially getting into trouble if you honestly knew about the trademark and thinking of making money off of it without their permission. Criticism (i.e. sucks), fan, and parody sites (including those of "commercial" celebrities) that are non-commercial in nature are generally okay, although obviously you can't make money out of them.

    Especially in the U.S., trademarks have different classes and strengths. Trademarks bearing common words (i.e. apple, shell, tide) are somewhat easier to get around as long as you don't do or put anything on the domain names that'll associate them with their marks.

    For example, you can register applewidget.tld to sell the fruit (which apple is descriptively known for) or even bowling ball products. You cannot use that domain name to sell anything electronic because Apple has already established trademark rights for that term for that context, keyword there being context.

    The more unique and/or famous the trademark (i.e. iPad, Google, even common-word combinations like Facebook and Microsoft), the more likely the general public will associate any domain name with their trademark even if you use them in a different way. So even if you register maybe googlewhatever.tld to open a dating site (which is what a Netherlands-based man did if I recall correctly), the word Google is famously associated with the search engine by many people.

    Bottom line: whether your domain name will possibly infringe its trademark or not depends on what you intend to do with it. If you want to ride on its trademark in spite of trying to hide your intention, then be aware of the consequences that the opening post described.
     
  21. ocaio

    ocaio Established Member

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    Hello,

    Do you think there would be any problem to registry a name as badooteenagers.info, .com or .net in order to use it as a blog to post information and comments about teen users of those websites, about how to flirt in badoo, and tips to chat with girls in badoo for newbies?

    and could it be any problem if I insert advertisements or affiliate links or other links to other pages of my net related to the same issue to increase traffic?

    thanks!
     
  22. Hypersot

    Hypersot Top Contributor VIP

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    I'm curious, torrent is a trademarked name, would naming a domain somethingtorrent be an infringement?

    also, I recently got a domain named dropboxie. Would that invite trouble from dropbox? (also trademarked)

    so, if a name is found at uspto.gov as LIVE and it's a part of any of our domain names, it is against the law?

    Just want to make sure 'cause it seems I have a lot of trademarked domains registered :S
     
  23. domainmisc

    domainmisc Established Member

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    It also depends on intent of the use of the domain, if you intend to use it as a blog, not selling anything, you could probably get away with it. However if you intend to make a profit off of it, that's where you start to have legal issues with the use of it. There are a few domains that have apple related trademarks that have not been taken away such as macrumors.com. Bottom line, if you are unsure, it never hurts to ask. On the subject of having a domain that does not have a trademark, if it is valuable, your better off hanging on to it than letting it drop.
     
  24. Hypersot

    Hypersot Top Contributor VIP

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    Thanks for your answer,

    thing is that what I really asked was, if a trademarked name is contained in a domain name -like the examples I gave earlier- would that be against the law?

    dropboxie contains the word dropbox (which is in the trademark database)
    somethingtorrent contains the word torrent (which is also in the trademark database)
    ..and so on

    I'm sorry if I wasn't clear before
     
  25. solankikunwarpal

    solankikunwarpal Established Member

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    Thanks, reading the above mentioned information has helped me immensely.
     

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