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.

 

[JudgeMind]

Someone on Facebook is trying to sell iphone.info, only a matter of time until they will be facing heavily backed lawyers

 

[Hypersot]

Good points.

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

I'm with you 100% there but then, lawyers would have less income now, wouldn't they?

 

[DomainVP]

Always beware the hand reg with a high search volume, as there is likely a company that has a common law TM or an existing TM.

You should not sell a domain to a TM owner... you can... but its playing a dangerous game for minimal profit. Especially if you are talking about the big guys.

AAPL is Apple Inc, and MLB is Major League Baseball. Both are very commonly recognizable identifiers for their businesses...

Drop them, and chalk it up to "lesson learned".

 

[DomainVP]

No problem.

Read up on UDRP and what the WIPO is, once you are familiar with that you will know what you can and can't buy.

You can contact your registrar and ask them to do a "grace delete", not sure how long you have to grace delete as I have never needed to do one, but if you just bought them recently you may be eligible.

Common Law TM is like a common law marriage... not formal TM but the name an it's associated symbols are 'famous' or widely recognizable as identifying with the main brand. It's a rough breakdown, but thats the gist of it.

 

[DomainVP]

the buyer has gone missing and no payment made.

Sounds like they did some research of their own... don't buy them anything, no need to incur further losses. We all make mistakes... just grace delete it and move on from it.

 

[lock]

I got letter from smiley.com company to ask me to stop using domain freesmileyfaces.com because my domain has their trademark word “smiley”. What you guys think about this case?

Nice try? What part of their business is free. I bet they just want your hard earned traffic. Unlawful claim imo.

 

[mreynolds]

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

 

[sadiyakhan]

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.

 

[akhilkg]

How about domains that have celebrity names?

 

[sherwood]

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!

 

[dompro]

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.

 

[ryankidman]

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

 

[RaiderGirl]

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?

 

[Ivannnn]

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.

 

[Ivannnn]

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

 

[ROUSALIN]

AskNasa.com

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

 

[mkinyua]

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?

 

[ocaio]

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!

 

[Hypersot]

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

 

[Hypersot]

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.

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

 

[solankikunwarpal]

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

 

[[email protected]]

Hello everyone, I am a newbie to your program so please cut a little slack. I registered over 1000 names back in the mid 90's and I sold quite a few of them, still retain about 450. Anyway I have gone through quite a lot of Trademark suits, lost some and won some, however the WIN record far outweighs the LOSS record when it comes to dollars. One particular trademark UDRP case, which I insisted on a three person panel was me against a billion dollar company, I won. Anyway 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?
Cheers

Nic

 

[arend]

Thanks fo this thread. I was flirting with hand regging a risky domain name TM wise. for a couple of weeks now. I have now deciced to not register it and forget about it. Not worth the stress.

Thanks for original post. Much appreciated.

 

[andylocus]

Hi all,

Any guidance would be very much appreciated?

Scenario:

Sandwich company in London for eg. hamsandwiches.com own the .com and the .co.uk

This company is not a registered trademark or recognised brand but is an established company in London.

Therefore can I register the .london domain and sell it to them?

Many thanks guys I would love to know the limitations of this approach.

Cheers

 

[buyselldoms]

Why would they buy it off you?

Is it a non-branded good they sell or their business name?

They don't need a registered trademark... if they are established and been trading under a certain name, they are protected.

Rule of thumb... best to avoid this approach, if they don't take action against you, you will have it until it expires, no one else will probably be interested in it and will just be draining your money by registering such domains and renewing them every year.