Consequences of Registering Trademark Domains

[snowbird]

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.

 

[Eric Lyon]

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

 

[Peter45]

Owning the domain in hopes for a buyer is NOT fair use. So many respondents respond with, "it's a popular phrase and is an investment for later resale or development." - No

Hi DomainVP,
not being polemic, just trying to understand.
I found this UDRP finding which seems - I could be wrong - to contradict your statement.


"The Respondent further highlights that it never used the disputed domain names for anything to do with the Complainants’ products ... and has in no way attempted to trade on the Complainants’ reputation, has never attempted to pass itself off as the Complainants, nor has it ever used the disputed domain names to divert consumers to competitive offerings of similar goods or services in which the Complainants collectively trade.

Moreover, the Complainants’ assertion that the disputed domain names are registered in bad faith, is essentially based only on the fact that Respondent is today offering the disputed domain names for sale.

However, the Complainants made no allegation and provided no proof that the Respondent ever offered to sell either disputed domain name to any Complainant and there is no element from which the Panel could infer that the Respondent registered the disputed domain names with the intention to sell them to the Complainant or trade off their trademark rights.
Previous panels have found that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP."


WIPO Arbitration and Mediation Center, Case No. D2020-3416, April 6, 2021
wipo.int/amc/en/domains/search/text.jsp?case=D2020-3416



... and then, from a presentation given at the WIPO Workshop in Geneva on October 12, 2022:

"While domain name investing may not be a prestigious business, it is a legitimate business and offers a valuable service.
In some ways, you could view domain name investors as functioning either as scrap dealers - - or as high-end antique stores.
We bring liquidity to an otherwise illiquid market. We are ready buyers when a domain owner wants a quick sale. We offer buyers a wide selection of readily available domain names at variety of price points, when it would be very difficult for a buyer to assemble such a selection on their own."

Smells like Cybersquatting? How the UDRP “Smell Test” Can Go Awry
circleid.com/posts/20221026-smells-like-cybersquatting-how-the-udrp-smell-test-can-go-awry



In short, it seems to me that owning a domain - and putting it on sale - in hopes for a buyer is legitimate business i.e. fair use.

 

[snowbird]

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!

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.

 

[enlytend]

There are resources throughout this section of the forum where you can learn about trademarks. If you're going to buy and sell domains as a business, its something you need to understand. At least the basics. Read. Learn.

Until you have a good understanding of:

• The difference between a tm and a copyright (because I've seen people on NP who haven't a clue)
  
• How trademarks are granted and what purpose they serve
• How to look up a trademark
• How to read and understand the records returned when you do a trademark search, including how to look at various details and accompanying documentation
  
• What types of trademarks there are
• What "Live" or "Dead" means on a tm listing
  
• Some understanding of arbitrary, fanciful, suggestive, descriptive marks.
• What makes a "dictionary word" generic and when is it not generic (and why)
• Why if a trademark has been registed for a dictionary word or phrase, legally it is NOT generic for the way it is being used.
  
• What "infringing" is
  
• What "dilution" is
• What "tarnishing" is
  
• What is a common law trademark
  
• What is a UDRP and what things have to be proven in order for the complainant to win.
  
• Why companies who have a trademark go after people who infringe on it
• And for good measure, browse through the Lanham Act
• Anything else that may pertain to trademarks in your country.

... until then, stay away from registering other peoples' trademarks. Simple!

Don't copy what you perceive "someone else" as doing unless you understand why and what risks they're taking (if any)

 

[snowbird]

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?

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.

 

[sella.ca]

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

 

[DomainVP]

I would like to ask someone, what if the situation was reversed, that someone went through a trademark (TESS) and registered a name and then filed a UDRP against the domain holder albeit ha the domain holder had it registered before the trademark was filed. My question is who do you think would win?

A trademark owner must show that they registered the trademark BEFORE the domain was registered. Otherwise there is no rightful claim on the domain, unless the respondent does not respond to the WIPO. In that case, the panels have been known to award the domain to the trademark holder.

You MUST respond to any WIPO/UDRP cases, and respond with vigilance.

The easy gist of the WIPO are three questions:
#1) Does your name violate a trade mark?
#2) Do you have the right to fairly use the name?
#3) Did you register the name in bad faith?

The WIPO panel must rule against you in all three questions in order to have a domain released to the complainant.

If you own a generic domain that has no copyright/trademark in your country, and you have a fair use right to ownership, and you clearly have displayed that didn't register it to sell it to them or for any other malicious reason... then you are okay and should be able to defeat any WIPO/UDRP.

Search for WIPO cases and read the panels decisions.

Owning the domain in hopes for a buyer is NOT fair use. So many respondents respond with, "it's a popular phrase and is an investment for later resale or development." - No

You must show that you have plans or an idea that you will actively use the name for. Be specific.

FInally, if there is no trademark found in question #1 than then usually question #3 goes right out the window. You cannot commit 'bad faith' if there is no trademark involved. Unless you use for the blackmail approach, then you have just put yourself in a bad situation.

I hope this helps, cheers!

 

[Hypersot]

I think it all boils down to your purpose. I mean if you own 'buyiphones.com', have a well-designed shopping website and are open about it then I don't think you should worry too much about the trademark issue. What companies don't like is when you use their trademarks and just park the domain and leech off their potential traffic without getting something in return. Just my opinion. I would love to hear your thoughts.

I believe someone needs to be a registered Apple reseller to be able to sell any Apple products.

Ofc I don't know how this works with domains that are for sale and *don't* show any TM ads but I'd avoid such domains if it was me since -I think- any mention of a TM name needs to be accompanied with permission from the company.

At least that is valid with an MS domain I used to have (msofficethemes). I made the mistake of registering it and then, after some research, I found out that even the MS in the name could lead me into trouble if I intended to sell it (ie. make money out of it).

 

[DU]

Basically, if I sell MLB and make money versus keeping the domain - am I some kind of dirtbag? I wouldn't create a site myself that had anything to do with the obvious implication of the letters - but am I at a moral crossroad here and don't know it since I am willing to market and sell the domain?

If you have a moderate understanding of the law and what a trademark/service mark is then it's very easy to know if what you are doing is wrong - the test is that it feels wrong. Put yourself in the position of someone who spent money or time establishing a mark and then how you would feel about what you are actually doing. A lot of domainers come up with justifications based on a crude interpretation of "generic" and look like idiots most of the time. Some domainers get too hung up on the mark and lose sight of justifiable other use. The major question that is asked is always about intent. so it feels wrong is a pretty decent answer. If you have to get defensive when questioned, then there is likely intent or complete lack of awareness. A complete lack of awareness in financial transactions is a recipe for disaster anyway... think taxes, think laws, think contracts, think LIABILITY. Domainers are often amateurs and get away with things through blind luck more than skill most of the time (with many exceptions of course)

Read up GoofOff.com for a pretty decent example of generic vs trademark.... I like to use it as an example because it touches on the first point that there are generic and other uses for marks; however, the mark is now so strong that the domain itself is very much overpriced with only one real major commercial buyer (lots of smaller buyers who wouldn't pay the asking price). So that touches on domains can become valueless if someone creates a broad trademark on your domain.

The specific answer is "probably not" as mlb is just three characters that have inherent value; however, if you did so with awareness of the mark then you are clearly in the wrong. If you approached MLB then you've soundly crossed the line.

 

[domainmisc]

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.

 

[gatekeeper72]

For example...If you own "Logic Diagram dot com for instance, and the word "Logic" is TM by almost 6,000 people, where do you draw the line at If it's against the trademark laws? Could you get a UDRP on just the one word if your only buying to resell the domain, but didn't know it was trademarked because it's such a generic word? Also, if there is 2 generic words in your domain that hold a TM, Like EllegantLingerieBuying for example, and "Lingerie buying" is trademarked? Does it have to be axact, or can the people that hold the trademark, file a UDRP on just those 2 words, or one word, or even the letter "i" in a word? Please explain...If so, then we're all screwed if we don't build sites, because i think every word in the dictionary, and some non-dictionary words even, are all trademarked.

 

[KDN]

Good points.

I just hope that someday clearer guidelines about trademark domains would be made.

 

[gatekeeper72]

I think it all boils down to your purpose. I mean if you own 'buyiphones.com', have a well-designed shopping website and are open about it then I don't think you should worry too much about the trademark issue. What companies don't like is when you use their trademarks and just park the domain and leech off their potential traffic without getting something in return. Just my opinion. I would love to hear your thoughts.

I think it all depends on the company, and the person / CEO that own the company, personally. I also think it would be good for people like microsoft, or other companies have a blurb on their site (perhaps in their privacy policy) that it's okay to own one of their url's as long as it's making money for them, and not soley you. However, we don't live on a perfect world where everything is in its place. I have to agree that if you're selling phones for them, and making them money, then no, common sense would be to not come after you as long as the sales keep up. But what happens when your site isn't selling that many, and they want that domain? All they have to do is file the UDRP, and it's theirs, and you possible have a nice big fine to pay.
Also, I have dealt with many big business owners in my day, and some, well, let's just say,some of them don't have common sense. Not saying the CEO of Apple is stupid, I'm just saying, unless you know them personally, I wouldn't go there. Also, If a company doesn't know about what they can do with their trademark, such as filing a UDRP, and all of a sudden somehow finds out about filing UDRP's, they might not put much thought into the whole process, and only think about the fine they could impose, and the domain they can get. Not everyone looks at both sides of the coin, and that definitely includes business owners. I see so many businesses around that I could help raise their profit margin by 50-75% by doing simple little things, that they haven't even thought of, or they are just plain stupid to not be doing it. Not everyone is the same. I guess what I'm trying to say, is that just b/c one becomes a successful business owner, doesn't make them any greater than another when it comes to intelligence, and common sense. A lot of them just get lucky, or pay someone to help them climb the ladder. We are all still individuals, and all different in different ways..I hope that makes sense...Therefore, I say it's not worth it, but that's JMHO...

 

[Hypersot]

If name is registered as in other countries than US, but not in US, can you use that freely in US?

If I understand your question, you ask if a name is solely registered in a country and has no international trademark claims? ... then yes, afaik, you can register said name anywhere in the world except in that country, even its .com version.

Please be very careful though in case the company that registered the name in that country is part of an international company, then things might become more complicated.

again, that's according to my knowledge. Please be aware that only a lawyer can answer 100% correctly to all TM questions

 

[Dorkvader]

I did some research and found out they fought with Walmart about Walmart using the smiley face in their commercials.

I'd imagine you saw the same article I read, but this is all that matters. "Loufrani fought with Walmart for years, but the Trademark Trial and Appeal Board eventually sided with Walmart." from a CNN money article.

I googled whether or not you can trademark a name and here is the short response "Maybe. Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service"

I'm not an expert on trademarks but I have done reading on subject. Just to cover my own bum, you should seek legal advice. But if I were in your shoes I would ignore it. If you do more digging on "smiley" and smiley faces they have existed since 2500BC. I think that would be on your side and help you out as well. The only area I think you might run into trouble is if you were copying his products/faces exactly.

 

[ojojames]

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.

 

[Brian2011]

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!

 

[cbartley17]

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?

 

[sella.ca]

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

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

 

[Dave_Z]

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.

 

[andylocus]

Roger that many thanks

 

[DomainVP]

You really just have to do your own research on this and read the WIPO decisions. Take some time to look up WIPO or UDRP cases on Google and give them a read. After a few days you will be an expert.

 

[gatekeeper72]

You really just have to do your own research on this and read the WIPO decisions. Take some time to look up WIPO or UDRP cases on Google and give them a read. After a few days you will be an expert.

I took pretty much all of yesterday reading up on this, and reading the WIPO's and the UDRP's, and I feel as though it's extremely confusing with very fine lines, and a lot of risk. So many generic words, and phrases have TM's...I Wish it was more defined, and cut and dry, and knew the answers to my question. I searched long and hard all day for my questions getting only bleak answers about it..It's hard to look things up because if I put in one of my domains to search for as in a 2 words domain, it's not TM, but if I take one of those words, there are many. Or if I have a 3 word domain, 2 of those words might be trademarked, but not all 3. Where do you draw the line? Also, I noticed that some companies, with a very short name such as ebay for example tried to file a UDRP on a Chesapeakebay URL, and some others that had that name in it, in which they didn't win of course, but this shows me the highly potential risks involved. Almost makes me want to run to the hills. I want to be on the up and up with everything, and NOT considered a cybersquatter, because that's not what I'm about. I have no intentions on ruining a TM of someone else's business at all. I just want to help other businesses with the potential of helping them grow with the domains I have, and with branding. So does that mean I will have to go from just investing in domains to resell, to getting unlimited hosting, and building out fully blown sites, or mini sites, making sure that even the logo isn't even close, investing in a logo as well, and making sure the sites I build out are completely unrelated to anything and everything listed in the TM names? I have a 3 word domain that 2 of the words have a TM by almost 6,000 people...That's a LOT to read, and sift through...But, am I going to have to sell them that way, or???? I feel very stuck right now in not knowing what I'm going to do at this point. I wish someone could give me a more cut and dry answer..It seems like a tremendously grey area.
I already just deleted one of my domains yesterday, that didn't expire until next year, as I felt it may have been trademarked b/c one of the words in the domain was. Not sure if it was, because it was a 2 word. Does both of the words have to be trademarked, or just the one? I learned that it is a very grey area on the flip side too, with ebay filing a UDRP on the name I mentioned above, and some others...
I am still VERY CONFUSED! Please, ANYONE, EVERYONE, help clear this up more for me....Or walk me through it like I'm 5...PLEASE! I don't want to have to give up just yet...But am not going to sell or buy at this point until I know things a bit more clearly.

 

[mreynolds]

I own a 5 letter domain that registered back in 2000. On 2012 I got an email offer for $95, I replied with counter offer $2900, they said they only want to pay $280 for it so the deal was off. Then last month they emailed me back with new offer $800 but I told them I decided to build a website on this domain. They told me that I can't do that because they now own the trademark on the name (they registered trademark in 2013). They are clearly don't want to pay more than $1k and I don't want to sell under $2k. What should I do now with the domain? I got a high offer from someone else but at the last minute they backed out because they found out there is a live trademark on that name.