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Could there be an LLL acronym domain as TM?

Labeled as question in Legal Discussion, started by elmoney, Oct 13, 2021

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  1. elmoney

    elmoney Top Contributor VIP ★★★★★★★★★★

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    I have received an email from my registrar about an LLL.co acronym domain, one big multi billionairy company demanded to give them a domain, that this is their TM, although this is a common acronym. Do they have the right to do so? Domain parked on for sale landing page with high xxx price. They threaten to sue, although they could to buy for xxx than spend even more on a services of lawyers:zippermouth:
     
    Last edited: Oct 13, 2021
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  2. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    What have the registrar said about it? I didn't think they get involved with such things unless it's blatant.

    Yes they can have a trademark on it. Have you used it in a way that would infringe on their rights? Just having a TM isn't enough for it to be a done deal, how many other trademarks exist for the same exact LLL combo, if they're not the only one then they can't really claim your targeting them, unless they have proof.

    I'm not a lawyer.
     
    Last edited: Oct 13, 2021
  3. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    If they had the TM before you had the name, then yes they do.

    Make sure you never have any TM holder ads on it as well

    Just like these are all TM'd..... CNN, IBM, CBS, MSN, KFC, KIA, IOC, NFL, NBA, BMW etc
     
    Last edited: Oct 13, 2021
  4. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    I'd say that it's not quite a cut and dry as that. They might have a right to do it if the circumstances mean that they do.

    Just having a trademark doesn't give me a right to take the domain kia.net from a person called KIA or who's initials are CNN. There are umpteen other circumstantial pieces of information that need to be taken into account, like do they have a trademark in the country that the OP lives? Are they well known in said country? Has the OP offered the domain to the TM owner? Is it reasonable to assume that the average person would know about the trademark in that country? Does the OP own the domain and run a business on it for goods and services that don't infringe on the trademark. Can the TM owner prove trademark infringement that targets them directly given other owners of the same word? Is the TM a figurative, word mark or both?

    It's not a blanket right to go around enforcing a trademark under circumstances that are unreasonable...
     
  5. elmoney

    elmoney Top Contributor VIP ★★★★★★★★★★

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    bnyco- 13.10.jpg Домен был только на стоянке.
     
  6. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    In the USA they have a registered word mark, registered in 2006. But so do "Brooklyn Navy Yard Development Corporation" for the same mark, that is good for you. Do you live in the USA? If it was me personally I wouldn't reply to their demand. I would ensure there was nothing to do with banking on there either, ever.
     
    Last edited: Oct 13, 2021
  7. jhm

    jhm Glazed

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    From a legal standpoint, I believe it depends on what your intentions are

    If someone owned "KFC dot fitness", and this is a personal website of a personal trainer called Chris helping people lose weight, and the business stood for "Kill Fat Chris" (funny, but lets go with it as a vague example), I wouldn't so sure if KFC, the chicken company, have a say in it ...considering its an entirely different sector, that isn't stepping on their business / their interests
     
    Last edited: Oct 13, 2021
  8. elmoney

    elmoney Top Contributor VIP ★★★★★★★★★★

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    I am not resident of the USA and do not live in the USA.
    Domain never used as website or never used in banking sphere, using only as parking/ landing page
     
  9. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    Sounds good. Just check on tmview.org or somewhere else that they don't have a trademark where you are a resident.
     
  10. elmoney

    elmoney Top Contributor VIP ★★★★★★★★★★

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    1000% they don't have in my country also in neighboring countries
     
  11. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    Glad to hear it. I'd say a happy outcome here tbh. Just don't ever target them and you'll be good. Serious overreach by them imho but I'm not a lawyer like I said.
     
  12. nononsense123

    nononsense123 Established Member

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    Ask them to stop this bullying and forget about the domain
     
  13. olcayto

    olcayto NameFree.net

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    They have nothing to fo with this 3L domain name, plus if you want to develop the name you can freely do that, as you mentioned you are not a resident of the US yet even though you are a US resident still you have right to use the domain name (even trademark it) as long as you are not crossing the current companies trademarked areas.
     
  14. jhm

    jhm Glazed

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    It baffles me sometimes as to why they didn't care to strengthen their online previously with other extensions, when they have the capacity to, and care so much, to then complain about it. Its almost a lack of diligence on their part
     
    Last edited: Oct 13, 2021
  15. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    Have a look at previous cases, if you are not using the name and just have it for sale, you will lose mor ethan likely lose the name if they file. Its all about usage and bad faith, if you have a plumbing business built around it and they are in banking, then you may be ok. If this instance its not the case. If you have name for sale, that does indicate bad faith as youre trying to benefit financially off someone's TM.

    FYI, Im not a lawyer, this is just from seeing many cases over the years. Speak to a legal expert though, good luck in the future @elmoney
     
    Last edited: Oct 14, 2021
  16. nononsense123

    nononsense123 Established Member

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    If that's the case let's stop this entire domaining business.
    A mere "For Sale" lander is not enough for them to take the name
     
  17. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    You might wanna check that, it is enough if the name is trademarked. Ask a legal expert though, not me. Ive seen it happen many times. You really think it would be ok if someone was selling Facebook.io or Twitter.de?? You honestly think the TM holder wouldnt have the right to take it from you? Whether its a LL, LLL or LLLLLLLLLL makes no difference. The "for sale" sign doesnt even have to be there, the fact its a TM is all they need if the really want it, especially when its not being used or is parked.

    Sell names by all means, but not trademarked names, it really is that simple. Stay away from TMs
     
    Last edited: Oct 14, 2021
  18. henrypcyeung

    henrypcyeung Established Member

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    In my opinion, your domain is at high risk of trademark infringement because:
    1. It is not a dictionary word.
    2. It is not a common acronym that is generally used by the public.
    3. When searching the 3L in Google, the first 5 pages of results are all about the company.
    4. The domain was registered after the company had the trademark.
    5. You are trying to sell the domain for profit, showing that you are using it in bad faith.

    In the email, I don't see that they need your domain. You may try to stop using a for-sale landing page and then see what will happen.
     
  19. HotKey

    HotKey Made in Canada VIP

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    Any name can be trademarked, so Giles argument that it's enough for a TM holder to merely file is a likely loss of the domain is bothersome to me. Particularly based on non-starters like:

    - the TM was made before the domain's creation
    - the domain is for sale
    - the domain isn't being used

    Does this really make sense?? Stuff like this does not imply an attack on someone's TM, nor does the mere act of the domain containing the letters of it. There HAS to be other factors, hard, incontrovertible factors to imply an attack on a TM and thus cause the loss of one's domain.

    When I see the wording of these TM infringement notices "protects its marks aggressively" it tells me they are making an accusation into someone's private property. They better well should have something more to stand on than having found a property being for sale if they wished to pursue it further. Absolutely ridiculous.

    Since when does a domain name have to be developed to constitute usage? Websites are not the only tool in the shed for a domain. One can even have a domain for sale and *GASP* use it for other means at the same time.

    I wonder if at times some of these companies are just probing and seeking clarification, but still the presumptions of TM holders and their assumed authority over domains seems nonsensical unless there is actual infringement.

    A bit of a broad reach with this one, I think.
     
  20. elmoney

    elmoney Top Contributor VIP ★★★★★★★★★★

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    Do you think, may be to set a bin xxx on landing page, it is benefitable for them, than spend more money on their lawyers?
     
    Last edited: Oct 14, 2021
  21. olcayto

    olcayto NameFree.net

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    if they are eager to apply a lawsuit, before that i'm sure they will do some maths :)
     
  22. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    I'm not completely disagreeing, but I do know that many UDRP decisions have asserted that selling domains is legitimate and not in itself bad faith.

    Surely they won't decide that someone has registered a domain in bad faith if they don't even have a trademark in the domain owner's country and if they can't prove they were targeted by the domain owner, which UDRP has decided in that way in the past? You'd have no choice but to go to court if that was the case.
     
  23. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    I see what youre saying, and believe me, I think it very unjust at times when it happens, but you only have to try and find a case like this where the domain owner has been trying to sell a trademarked domain of a billion dollar company, has been taken to court and has ended up winning and keeping the domain, its pretty cut and dry when it comes to the legalities here.
     
  24. eternaldomains

    eternaldomains Established Member

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    Everyone debating here won't be debating anymore in the near future once ICA/NN starts giving the ability to legally and quickly hijack/grab/steal domains with UNregistered TMs, firstly to intergovernmental organizations. Then once intergovernmental organizations get this privilege, companies with TMs will follow suit, bypassing the Courts altogether.

    From that point onwards, you all can forget about investing in ALL 1Ls to 3Ls and maybe even 4Ls.

    Read and take action here: https://www.namepros.com/threads/du...oup-jeopardizes-domain-owners-rights.1255004/
     
  25. MadAboutDomains

    MadAboutDomains Top Contributor VIP ★★★★★★★★★★

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    Well the courts are bypassed altogether already? You can however take it to court if you have deep pockets.
     

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