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.

 

[Raindrops]

Ok - I went a did some Google research on a domain I own - Micron . io

There are literally about 18 domains with some variation or another in the domain and/or company name - the largest of them being Micron Technologies who owns micron dot com. Most of the companies are tech given the micron association, some medical, some engineering, game app.....etc

So do I have yet another possible issue here?

 

[Joseph Green]

I will keep you guys posted on what Gdaddy and Dynadot tell me on the delete option.

Try to grace delete first (partial or full refund), and if ineligible, you can delete without refund:

• https://www.dynadot.com/community/help/question/refund-domain
• https://support.godaddy.com/help/article/412/deleting-a-domain-name-registration

There are literally about 18 domains with some variation or another in the domain and/or company name

Both registered marks and common law trademarks are vertical specific, meaning that you can open a company named Apple Gardens Inc. and Apple Inc. would have no legal ground to stand against you. Just don't show ads for iPhones on AppleGardensInc.com or you'll be infringing on their trademark. Conversely, selling gardening supplies or even the fruit would be perfectly legal.

Of course, when a company with that much money wants you to do something, it doesn't really matter if they have a legal right to pursue you, because they'll just use their bankroll to drag you through costly legal proceedings until they've depleted your company of all resources. If you receive a C&D letter from a large company, this is something you'll want to take into consideration.

 

[Andrew Chen]

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.

What if you just park a domain instead of developing a site and later on someone else trademark it?

 

[blizzardofoz]

I am thinking of getting a domain name with the name of a politician it.

Not like FirstnameLastname.com, but more like LastnameSomeSuffix.com.

Back in the days, there were sites like bushsucks.com and barackhusseinobama.com (both stilll breathing.)

Does anyone know of any legal issues involving such domain names?

 

[archers]

I am thinking of getting a domain name with the name of a politician it.

Not like FirstnameLastname.com, but more like LastnameSomeSuffix.com.

Back in the days, there were sites like bushsucks.com and barackhusseinobama.com (both stilll breathing.)

Does anyone know of any legal issues involving such domain names?

UDRP proceedings can be initiated... on the following principle...

1.6 Can a complainant show UDRP-relevant rights in a personal name?
http://www.wipo.int/amc/en/domains/search/overview2.0/#16

 

[archers]

What if you just park a domain instead of developing a site and later on someone else trademark it?

You may succeed if you had no knowledge of the mark being already used, though unregistered. The knowledge can be presumed based upon your location and the location of the Trademark owner and any other evidence available during the UDRP proceedings !

 

[lock]

What if you just park a domain instead of developing a site and later on someone else trademark it?

I have had this happen they do it so you don't sell to others just jack up the price if they spent the money on trade mark they will sooner or later drop it or cave in. Reality is your the intellectual owner they are trying to lift it.

 

[hikari]

1)

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.

If I parked my apple site with ads relating to music, I assume that breaks trademark?

2) Target (as an example), trademarked dictionary name, they sell anything from groceries to clothes to televisions. Does that mean their trademark covers almost all commerce?

 

[Ms Domainer]

I registered microsoftsupport.co.uk what do you all think? It has huge exact search

Definite cybersquat.

I'd throw that baby back into the domain name ocean.

 

[FortuneSeller]

I have bought a domain from godaddy, kamasutracrazy.com
will the kamasutra word in it be an infringement to the trademark thing??
Iam willing to sell the domain instead of developing it
plz put some light on it

 

[iowadawg]

You okay on the kama sutra.
Though the domain to me is useless.

 

[lock]

How and when did kama sutra get trademarked next steamed rice and kungfu will be trademarked by a westerner.

 

[payekz]

hi, am a newbie, i checked the trademark for 'lastsold' and found out that 'last 10 sold' existed- the status is 'dead' because it was cancelled in 2013. is my domain, 'lastsold' ok?

 

[lock]

hi, am a newbie, i checked the trademark for 'lastsold' and found out that 'last 10 sold' existed- the status is 'dead' because it was cancelled in 2013. is my domain, 'lastsold' ok?

Seems a great domain.

 

[payekz]

I thought the term 'domain name' is generic? I checked it up with uspto.gov and got 77 entries with 'domain name +words '. can one then say 'domain name' is trademarked and cannot be used by every other person? i'm confused on this term.

 

[citylines]

I had KindleStore.co.uk
Then I got a 200 page letter from Amazon's legal team in the UK who bought it rather than take me to court.
I'm sitting on a big one at the moment, being new & naive. I am seriously thinking of approaching the company to tell them I have it but I have also noticed legal firms using the word in their domain names trying to get work to pursue for damages as it is a medical treatment.
So not sure what to do, if a registered law firm is using it they must be aware.
Any advice would be helpful.
Just been reading about newbie mistakes, sounded like someone familiar, but good advice.
Many thanks.

 

[Dorkvader]

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.

Thanks this thread has helped me out a lot. I was a tad worried about TM issues with a few of mine but I think I'm okay.

 

[mreynolds]

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?

 

[iamanushanth]

Every newbie need to read this thread fully. This is a very very informative thread about issues in registering a trademark domain. Many peoples were shared their views and insights in details. Thanks, all of you who contributed to this thread.

 

[entrepreneur37]

Hi, I'm new and want to register domains for sale.
1. You say that if I, for example, register a domain with the word apple, but I don't sell phones and computers and sell apples, I won't have a problem. But I only register the domains to sell them, I don't use them, and there is nothing on them. In that case, can I have a problem, or will it be up to the person after buying it, then what will it sell in it and what will it use for it?

2. If I use words by combining them like newhome.com, gaminglaptop.com newphones.com and the like. Can I accidentally infringe on a copyright or trademark. Words like phone, laptop and the like are common words and I don't know how to make sure one of the words or all does not match any brand or infringe any copyright?

3. If there is a domain named newhome.com and I register newhomes.com or there is a domain named goodnews.com and I register newsgood.com will there be a problem?
I don't want to steal domains or abuse brands like apple or microsoft, just by accident I may have registered a domain similar to another or trademark with common words like newhome, newphone, newphones, gaminglaptop and more


So I ask here not to break the law. I want everything to be legal. Thank you all !

 

[Zagalee]

Another part I need to Learn in domain industry to avoid getting into any trouble . Thanks for the information.

 

[JamesDias]

Hello

What about LLL domains? Most of them are trademarked

 

[lock]

Hello

What about LLL domains? Most of them are trademarked

What does each trademark cover? It certainly doesn't cover every industry.

 

[tommy944]

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.

 

[Peter45]

Ok, I see now that of the two sections that I quoted in my post above, only the 1st one referred to the fair use of a TM-domain by a domainer.
So let's forget the 2nd quote.


Just to be clear
in my previous post I was referring to this statement:

If you own a generic domain ... and you have a fair use right to ownership ... then you are okay and should be able to defeat any WIPO/UDRP.
...
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

In other words:
If you own a vocabulary terms domain which represents a TM, selling it is in principle unfair use,
even if there is no website attached to it, you didn't target the TM owner and through the sale the interests of the TM owner didn't get damaged.


The 1st section that I quoted seem to point to the opposite assumption: if you own a vocabulary terms domain representing a TM, selling it is in principle fair use.
The sale of that domain represents unfair use if you target the TM owner or if you knew/could know that through that sale the interests of the TM owner can't but get damaged.