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.

 

[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?

 

[KDN]

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

Lmao. :D

 

[gatekeeper72]

I want to register a domain but the only difference is an ''S'' at the end.

My domain hypothetically is MetalDoors.com but there are two companies one in the USA and the other in europe both owners of the word mark ''MetalDoor''. The US based company has the type of mark ''SERVICE MARK'' and the second company as ''TRADEMARK'', which both are live until today.

What to do please?

As long as your "MetalDoors" have nothing to do with what they do, you should be fine. For example, if they both sell Metal Doors, you could make a mini site/blog that is about a metaphor of "Metal Doors"..Completely unrelated to what they do. Like "Metal doors" could be doors that are hard opportunities to get into or door that are hard to shut (in life) or something like that..Then post a blog about Difficult scenarios, or whatever. I hope I'm making sense here.But in the very rare case, they have something like that, you'll want to brain storm, and just make it completely un-related. I guess what I'm trying to say is that it could be a metaphor of some kind. Just make sure they aren't using it. It doesn't have to be literal. As long as you can show good intent, and that it's completely unrelated to what they do, you should be fine. Also, metal doors is a bit generic, so you might be fine. I, personally wouldn't chance it, and would go with the metaphor, but that's me. GL anyhow.

 

[gatekeeper72]

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.

You had the domain before they had the trademark, therefore you, personally can't get into any trouble. You can still sell it as long as you sell it to someone that is doing something completely unrelated to the trademark. So you have 2 options here. You can build it out yourself, and go into competition with them, since you had the domain before they had their trademark, or you could sell it to someone that can also trademark it for different purposes other than what the trademark people do. I have seen many times a name get trademarked by several different people, but all doing different things with the name. Or you can also educate the people that have the trademark, and let them know there trademark means nothing to you, and stand firm, since you had the domain first, could go into competition with them if you wanted to, but that might be a little threatening. (I wouldn't mention the part about competition unless they get nasty...That's just me..lol..I guess what I'm trying to say is that you could educate them about it, and still sell it to them around what you want for it possibly, or just ignore them, and do one of the other 2 choices above. (Sell it to someone else doing something unrelated, or build it out) Either way, the ball is in your court, unless you look at the glass half empty. Hope this helps, and GL!

 

[gatekeeper72]

great information. I have a friend that should have read this post, as he owns a few music artists names who are trademarked, and was worried about developing a blog (i.e LilWayneVideos.com or MileyCyrusLyrics.com)

Yeah, He could most def get in trouble for those. Names like that there is no getting around unless you become besties with Miley, or LilWayne, and she, or he doesn't care, but don't piss them off..lol..Cuz then they can file their UDRP against you...(As if they need the money)..Anyhow, I would tell your friend to MOST Definitely delete them, and also maybe put up privacy on the domain ownership before doing so.

BTW: I am finally starting to get the hang of all of this, and understand the whole trademark thing a lot more clearly than I did. I guess it was good for me to take a break from it for a while, and come back refreshed, and recharged.

 

[gatekeeper72]

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

Personally, I think you are treading in an alligator pond, and If I were you, would most def get rid of it, and toss it like a hot potato! JMHO..Microsoft is very well known, and I don't see you getting around that name at all. If it were more generic, such as "Technical Support" or "Electronic Support", or "Cell Phone Support" or something like that, you wouldn't be targeting microsoft, and you would be better off.

 

[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...

 

[gatekeeper72]

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).

Actually, if you sold it to someone with the initials MS, And built out the site, and called it something completely different than Microsoft. Like "Mary Sunshine's Office Supplies" (Thinking this, only b/c Those are actually my initials), and I would have actually liked to have that domain, and build it out, and resell office systems..Why not? As long as I'm not reselling microsoft supplies? Like I could have sold desks, chairs, and other office stuff..Or someone else could have. You could have also have a sale sign at the bottom that said "this site is for sale, but not for intended reseller of microsoft products", and made some money from the site until you had your buyer. I'm not saying you were completely wrong in getting rid of it, but just saying that you could have gotten around it being unrelated to Microsoft all together, and would have been fine. Please correct me if I'm wrong..

 

[gatekeeper72]

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).

So sorry for my post above thinking for some reason you said "MS office supplies". You could still do the same with "MS office themes", however, that might be a bit more tricky to get around, but I think possibly still do-able with your own initials, and unrelated to Microsoft...

 

[sandyhere]

If name is registered as in other countries than US, but not in US, can you use that freely in US?
If tomorrow, trademark bully comes and asks you to vacate the domain?
If at the time of purchase, domain was not trademarked, domainer should be able to retain it.
Having a working website (rather than not having it) should affirm the claim.

 

[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

 

[lock]

What happen when someone trademarks your intellectual property. So a coupleofkeywords.com becomes coupleofkeywords TM and you just have to wonder why and whether your in a better position or far worse.

 

[Raindrops]

I will wade into this because I am guiltily not guilty. I think

I am new to this (2-3) weeks. Read and absorbed plenty, but wasn't reading the right things at the right places. I ended up eventually landing here and am very glad I did.

That said, I hand reg a deleted LLLL domain (AAPL), and hand reg a second domain (MLB). Obviously not .coms, but not terrible extensions either. AAPL I was going to sell - MLB I was going to use as my personal domain since the letters work for me personally.

Both letter combos - AAPL and MLB get really, REALLY good Adword exacts. So, I sold AAPL for a pittance at an auction I way overpaid for (noob), and listed MLB as I keep waffling about keeping it. Sorry, I know this is long...

I researched both terms (AAPL and MLB) in both the US and UK trademark registries. Neither of them are TM as AAPL is a stock symbol and MLB isn't MLB.COM is, but MLB isn't for what I assume is it's because it's three letters. Kinda like Microsoft probably can't TM "MS"........yet.

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?

 

[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".

 

[Raindrops]

Thats a new phrase I didn't know but am glad you mentioned it. "Common Law TM". Is that something that exists in a legal decision and doesn't require a technical TM so to speak?

So how do I drop them? Can I force delete a domain prior to the year reg period? The AAPL is sold but buyer hasn't made payment - I believe I am obligated to transfer ownership, but would you suggest just backing out?

BTW, thanks for replying!

 

[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.

 

[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.

 

[Raindrops]

Ok, thanks for the feedback.

@defaultuser I haven't approached any companies trying to sell them something. Maybe I wasn't clear in my earlier post. I did know the search results prior to registering the domain, and when waffling to keep it for personal use auction listed it. No sale - I ended it.

@DomainVP I have read up on UDRP and WIPO - but it did seem a little unclear at points. I will contact the registrar on MLB and get it dropped - if it won't I will....?

The biggest obstacle is I have a closed sale on AAPL which the buyer has gone missing and no payment made. Do I follow through on that, or explain my issue and buy them a Starbucks card?

 

[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.

 

[Raindrops]

Ok, will do.

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

Thanks for your help!

 

[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