Could *Insert Region Keyword here* Properties.com be a potential TM/Legal issue?

[Damion]

I have a couple of domains that relates to a high value Real estate region and noticed that one company operates under *Insert Region Keyword here* Properties, at least i saw instances of this company being referred to as *Insert Region Keyword here* Properties but there website is LLL.ext which is not active as it seems.

It could be that the email address is still active since i have seen this advertised on several sites.

So i was wondering if it would be wise to contact the company in question to approach them to acquire this domain?

If one would have the domain NewYorkProperties.com and a company is being referred to as New York Properties and holds a website under the domain NYP.us but their site is not active would you place yourself in a Bad Faith position if you would approach them to acquire NewYorkProperties.com?

Would a domain like NewYorkProperties.com be regarded as generic? And would it be safe to approach for instance the company behind NYP.us?

I have lots of other potential prospect buyers but this particular company could be the ONE that has strong potential to acquire this domain.

What to do and what not to do?

 

[Damion]

Advice is much appreciated guys.

 

[Ronald Regging]

My first opinion is that its generic. It's like you cant get a TM for Apple to sell apples... So, getting a TM for New York Properties to sell properties in New York seems about the same to me.

 

[Damion]

Exactly, i have this same perception as well Herb. The words are generic on their own and in combination as well.

It's just a delicate situation since it's a opportunity for a nice sale.

 

[DNQuest.com]

OK, here is where reality meets the domain world.....

Using the example given, New York Properties (NYP). Though it may seem to be generic, it is offering goods/services in a specific catagory. It is afforded some protection under common law TM (this is assuming there is no registered mark, if there is a registered mark, then we are just wasting our time right now). Now this is where it gets tricky, under TM law, the level of prection may be far less than if the name was more "unique". So challenges under TM law may seem more "lenient" because of the perceived generic and/or descriptive nature of the word combination.... BUT:

In the domain world, the requirement is "rights to a name"... The 2 quesitons are: 1 - do they have a right to a name? The answer is most definelty "yes" 2 - Do you have any rights to the name? The answer is "no" (unless you name is NYP, then you do have some rights and I think your parents have issues). So in a UDRP, a panelist may deem that NYP, for the purpose of the proceedings, is concidered a TM since they do business in commerce under that name.

I do feel domainers get too hung up on the technicaltiies of TM law as opposed to the reality that if a name is used in commerce, UDRPs tend to favor the complainant because they (NYP) are using the name in commerce.

 

[Damion]

Thank you very much Philip for your response.
It's however very confusing and raises more questions for me.

If i get you right then if i would own Cars.com and was testing the waters to find end users and i approached a company named Cars LLC involved with selling cars i could lose the domain in a UDRP decision?

Great

 

[DNQuest.com]

There have been decisions where the complainant won and I scratched my head wondering how it happened. It is a sad and unfortunate truth. People think I am pro-TM holders and I'm not, but most posts in legals are from people looking to "score" with a TM domain as opposed to using it in good faith. I have written my share of opinions helping people how to protect themselves better from TM claims.

In UDRPs. it is up to each party to show their side to convince a human panel who only have guidelines as opposed to hard line criteria. Anything is possible, it is the domain holders job to protect themselves from any improprieties. With the cars.com example, if you try to steal traffic from car LLC, then a xase could be made and hopefully your attorney will show it as a descriptive term and truly generic in nature. But if you used it and copied the cars LLC site and pass yourself off as cars LLC, a panelist could be swayed. It sucks and I wish it was different, but in domain reality, it is up to us to be above board.

 

[Damion]

There have been decisions where the complainant won and I scratched my head wondering how it happened. It is a sad and unfortunate truth. People think I am pro-TM holders and I'm not, but most posts in legals are from people looking to "score" with a TM domain as opposed to using it in good faith. I have written my share of opinions helping people how to protect themselves better from TM claims.

Very true and i am glad there are members with a good grasp of TM's to help out other members that want to know where they stand.

With the cars.com example, if you try to steal traffic from car LLC, then a xase could be made and hopefully your attorney will show it as a descriptive term and truly generic in nature.

That could only be done by optimizing the site for "Cars LLC" and using advertising campaigns promoting "Cars LLC" and the existing link leading to Cars.com and of line advertising campaigns touting "Cars LLC" and trying to deceive the public it matches to Cars.com

That is a big step from my personal situation, i am not planning to steal traffic or to mimic the site of the company to pose as *Region*Properties LLC

But if you used it and copied the cars LLC site and pass yourself off as cars LLC, a panelist could be swayed. It sucks and I wish it was different, but in domain reality, it is up to us to be above board.

Why would that suck Philip?
A domain is being used to fool the public a certain company (original) is owner of the domain by adding original content and presentation that matches the website of the original company which in fact is operated by a company/individual not belonging in any way to the original company.

This is a very big leap concerning my own personal situation and is not something i am planning to do in any way.


Let's keep it to the originating scenario and not adding scenarios on top of it

 

[DNQuest.com]

When I typed this last night it made sense in my head than as opposed to being typed. What I was trying to get at is having a truely generic domain (cars.com) is so vague and descriptive, but a panelist would just see it as being a TM being used in bad faith, when in fact it is being used in the descriptive sense as opposed to stealing traffic from cars LLC. But since they are both in the same field, a panelist may view it as bad faith. Hope that explains it better

btw- If we don't do senarios, then thread would only be 3-4 posts long lol

 

[Damion]

So at any time when approaching potential end users, anyone with a generic domain marketing their domain to suitable end users are putting them self in a bad faith position to the UDRP panelists?

Great