question Could there be an LLL acronym domain as TM?

[elmoney]

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

 

[HotKey]

What I have always wondered and @jberryhill would know is if it makes sense to correspond back and state you know your rights and are prepared to go to the UDRP or hire a lawyer to contact them. Or do you just sit and wait and take the chances in a UDRP?

Surely you've been around long enough to have gotten a similar notice or two like the one the OP displayed. With the prevalence of TM's covering everything from Bob's uncle's straw bricks to single character alphabet letters, it is almost impossible as domain investors to completely fly under these entitled people's radar.

I have received one or two of these emails myself, and I knew beyond a doubt that any similarity the DN had with the TM ended with the raw domain name itself. There was no indication of infringement, purposeful or even coincidental in the DN's usage. They were sent as strong-arm tactics in the hopes that these domains would simply be handed over, no questions asked. Both cases I have responded, and with the truth: the domains were purchased for personal use and had no relation to the company and its mark in question. One request was for a single-letter domain, the other a five-character generic word.

It's been years and the buck stopped there. Luckily. I'm not sure how beneficial it could be though if the entity happened to be a more ambitious study, set on taking it further regardless of reply. A damn nightmare for sure, the logic or common sense of the little man might be like bringing a sword to a gunfight.

So, for example, if a new domainer, who obviously didn't have many 2L names, acquires a 2L name, which obviously has many TMs registered by many companies, and then starts sending outbound sales emails to potential companies without checking for TMs since there's just too many of them, that domainer will be in very hot soup right?

My first inclination on this is yes, actively courting a TM holder with one of your domains, whether or not you did your research, is a nice ingredient for that hot soup called bad faith..

 

[Bob Hawkes]

using only as parking/ landing page

But be very careful with parking, if they put links related to the bank or its competitors then UDRP panels have used that as evidence of bad faith. I would recommend landing page only, so no possibility they can claim you are benefitting from, or interfering with, their TM.

 

[equity78]

Surely you've been around long enough to have gotten a similar notice or two like the one the OP displayed. With the prevalence of TM's covering everything from Bob's uncle's straw bricks to single character alphabet letters, it is almost impossible as domain investors to completely fly under these entitled people's radar.

I have received one or two of these emails myself, and I knew beyond a doubt that any similarity the DN had with the TM ended with the raw domain name itself. There was no indication of infringement, purposeful or even coincidental in the DN's usage. They were sent as strong-arm tactics in the hopes that these domains would simply be handed over, no questions asked. Both cases I have responded, and with the truth: the domains were purchased for personal use and had no relation to the company and its mark in question. One request was for a single-letter domain, the other a five-character generic word.

It's been years and the buck stopped there. Luckily. I'm not sure how beneficial it could be though if the entity happened to be a more ambitious study, set on taking it further regardless of reply. A damn nightmare for sure, the logic or common sense of the little man might be like bringing a sword to a gunfight.

Thankfully no, never ever have received one. The LLL I owned and I have owned them in .com, .co, .tv never were any famous marks.

I have handled negotiations for a couple friends that had a company say the name was their rightful property. Each time like your experience, once I explained that we knew the law and knew our rights in the name, it was purchased.

 

[equity78]

But be very careful with parking, if they put links related to the bank or its competitors then UDRP panels have used that as evidence of bad faith. I would recommend landing page only, so no possibility they can claim you are benefitting from, or interfering with, their TM.

Exactly don't ever park the name, have a coming soon page.

 

[jberryhill]

But be very careful with parking, if they put links related to the bank or its competitors then UDRP panels have used that as evidence of bad faith.

Exactly don't ever park the name, have a coming soon page.

Here's the thing about parking and acronym domains....

Take a case like "GNP" mentioned above. It is very well known as "Gross National Product" and not as well known as a Mexican insurance company. You have to think on a scale, and not in binary terms.

Some great resources are out there like.... you'll never guess what I'm going to recommend... GOOGLE - for figuring out the relative significance of a trademark vs. acronymic meaning for a short string of letters. There are also things like acronym finder, etc.

Now about PPC. I don't know what the morons who run these systems are up to these days, but for many, many years, I've been saying the same thing - you have to use a system that lets you target the results. That was, at least back when I was there, the entire point of the targeting system in the Uniregistry marketplace. There was even a category "Shopping : personalization" that would point a name to ads for things like monogrammed merchandise etc.

Do not use "coming soon" or some other basically dishonest statement that you will be developing a name if you will not be developing a name. It doesn't help you to lie. Likewise, don't use a dumbass statement like "this name might be for sale". That second one is a pet peeve of mine. It's like "I sell drugs, unless you are a cop." Just dumb stuff.

I'm amazed that people can look at those cases and say "don't use parking" (and I see that Bob has said "be very careful" which is correct). Name Administration had over 37 UDRP wins with every single name on PPC parking. And people still say "don't park the name". It's not that simple.

Take a case like JDM.com. I can't even remember what the complainant's trademark was for, but the name was parked with links to Japanese car parts because "JDM" is an industry-standard acronym for "Japanese Domestic Manufacture" - they are car parts made in Japan but not for export, and they are popular with people who are into pimping out ricemobiles.

But, if you can't target the PPC, then, yeah, it is likely to target on some obscure TM meaning, and possibly in a geographic area other than your own, so you aren't even going to know.

If your names are valuable to you, and you have them on PPC, then take the time to have a look at what those names are doing. For example, if you have armbone.com and the PPC links are for "orthopedic doctors", "vitamin D", "weightlifting", etc., then you are probably okay. But if the links come up "footwear", "shoes", "athletic shoes", and so on, then that might be a good sign that someone is using "armbone" as a trademark for shoes, it is feeding back into the PPC engine, and you are going to lose a UDRP.

Then, we come to the next two misguided pieces of advice - "don't resolve the page" or "just put it on a 'for sale' lander".

Not resolving the page at all is itself a point against you in the UDRP. Period. You are throwing away the "legitimate interest" criterion and into "non-use as bad faith use".

A UDRP proceeding is focused on "why did this person register this domain name?" and is going to look at any OBJECTIVE evidence that helps answer that question. If you do not grasp that point and its implications, you are just going to keep punching yourself in the nuts.

So, let's run through the options:

1. Targeted PPC relevant to a generic meaning - The name speaks for itself. If the name is "ELK.com" and it has PPC ads for hunting equipment, hunting lodges, hunting guides, etc., then we can be pretty sure that it wasn't registered to take advantage of some obscure Australian trademark for clothing. That's a good chunk of the non-priority-driven UDRP outcomes in favor of the domain registrant.

2. A "for sale" lander - The situation is not as clear. Is the person looking to sell it for its trademark value, or for its dictionary meaning. We don't know, so let's have a look at things like previous cases with this person, what OTHER sorts of names have they bought and sold, etc.. This species of case is why it is good to have a consistent pattern of buying and selling generic names, phrases, acronyms, etc.

3. Name not resolving - who knows. The domain registrant is not helping themselves here.

There is a hybrid approach, and I've discussed it before. If targeted PPC is no longer possible - and I don't keep up with the various ripoff outfits that provide PPC anymore - then you ought to consider a TARGETED for sale page.

If you have a name worth $XXXX, then it is probably worth a few minutes to EXPLAIN WHY IT IS VALUABLE. Instead of simply "this name is for sale", why not expend a few words to actually SELL it.

Take this page for HAI.com, for example:

"Hai" is the common latin script transliteration of a common Japanese expression. Now, let's say there is some company out there with a trademark for "HAI" for weed killer. They file a UDRP complaint and say, "The registrant tried to sell me the name for $75,000 and it is my trademark!"

Now, look at that page, and look at that UDRP claim, and pretend you are a UDRP panelist. Answer the question, "Why does the respondent think the name is worth $75,000?" The answer is bleedingly obvious.

Let's try another one. GINGHAM.com :

Okay, now, suppose some company in Switzerland has a trademark on "GINGHAM" for yodeling instruction. Who is going to win the UDRP?

A TARGETED for sale lander doesn't need to be that elaborate. A few words will do. If you have a three letter domain name that is used for ten different generic acronyms, then simply say so. "This rare three-letter domain name can be used for your initials or whatever else you might want these three letters to stand for. A few common meanings are ..."

What is going to save you in a UDRP is an obvious and credible reason why the domain name has value apart from whatever narrow trademark meaning it may have. If the ONLY real significance of the name is as a trademark, you are wasting your time. If you think that "I bite monkeys" with monkey meat recipes is going to justify registering IBM, then you are wasting your time.

I realize that some domainers don't quite grasp the distinction between an objectively credible rationale and ad hoc rationalizations, but I can't fix that.

 

[eternaldomains]

@jberryhill what if one sets up names as redirects for traffic as described in the 'Incognito Domainer' thread - https://www.namepros.com/threads/incognito-domainer.1212182/

Would that be suitable, and if so, would that setup help defend risky names like IBM?

 

[jberryhill]

Would that be suitable, and if so, would that setup help defend risky names like IBM?

1. If you have bigshoes.com, then using it as a re-direct to a site where you are selling shoes is fine.

2. If you have Nikeshoes.com, then using it as a re-direct to a site where you are selling shoes is trademark infringement.

3. If you have IBMServers.com, then using it as a re-direct to a site where you are selling shoes is trademark dilution.

Using a famous or inherently distinctive mark to direct to your online store is going to simply be viewed as exploiting someone else's goodwill for commercial gain by diverting traffic intended for them.

 

[jberryhill]

But, if anyone is still reading this thread, here's a classic example of a great name that is likely to be ruined by PPC.

This popped up at the NAF:

Oh, hey, common dictionary word, no problem, right?

Here's the thing. If you look at what the name is doing on PPC, the first link on the page is this one:

Now, personally, I had no idea (until a few minutes ago) what on earth the word "tips" has to do with "alcohol training".

This is the kind of thing you can figure out pretty quickly in what I call "guess the complainant".....

First hit in a Google search:

Now, think about this for a minute. You have tips.com and you put it on automated PPC. Elsewhere in the internet advertising ecosystem, there is someone paying to have Google connect "tips" and "alcohol". So, their own PPC advertising feeds back into domain parking systems and produces search links that are relevant to the trademark.

That's why people say "don't use PPC". If there is an obscure mark out there, PPC will find it and poison your name - IF YOU CAN'T TARGET THE RESULTS. If you CAN target the PPC results, then relevant ad topics will save the name. If the page was targeted to things like restaurant jobs, it would actually establish legitimate rights in a UDRP dispute.

You could say "But the domain registrant doesn't even know the PPC system is doing that." Too bad. The majority of UDRP panels take the position that if you own a hotel, and there is a prostitution or drug business operating out of that hotel, then you can't claim "I just own the hotel", even if you aren't getting a cut of the illicit action. In some cases, there have been panels which did recognize that incidental or brief appearance of relevant PPC ads was driven by the complainant's own advertising and not generally reflective of the registrant's intent - e.g. pig.com, outside.com, eaa.com and gnp.com (mentioned above).

 

[Future Sensors]

Now, think about this for a minute. You have tips.com and you put it on automated PPC.

The result on the page is indeed clear. I wonder the following. Do the panels take into account in some way that the domain owner does not know what kind of advertisements will appear on the lander? It can also differ per region so that he is not aware of what is shown.

 

[jberryhill]

Do the panels take into account in some way that the domain owner does not know what kind of advertisements will appear on the lander?

As I mentioned, in extremely rare cases (outside.com, gnp.com, eaa.com). The general rule applied by panelists is stated here:

https://www.wipo.int/amc/en/domains/search/overview3.0/#item35

3.5 Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith?

Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

While a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name, panels have found positive efforts by the respondent to avoid links which target the complainant’s mark (e.g., through “negative keywords”) to be a mitigating factor in assessing bad faith.

-------------

It's important to recognize when a potential defense becomes a black hole which would swallow the UDRP. In a lot of instances, there's no way to tell if the respondent has targeted or not targeted the PPC links on the page.

So, anyone could take a trademark, set up infringing PPC links and say, "Oh, I didn't know."

Which again circles back to whether there are other facts that put that denial into a context which supports it. What kind of name is it? What kind of mark is it? Can you show that the PPC links were caused by the Complainant's own advertising? (e.g. pig.com, elephant.com)

Incidentally, when I mention specific domain names like that ^^^^, I'm referring to the UDRP disputes pertaining to those names. The pay rate at Namepros is not conducive to spending a lot of time on citations.

 

[Future Sensors]

Thanks @jberryhill

Context of the situation is king, thanks for providing this context. The same will likely also apply to marketplaces that don't list any PPC ads, but do recommend other domains that might be of interest to the buyer. So to speak, an Amazon-like smart interest-based recommendation system.

The pay rate at Namepros is not conducive to spending a lot of time on citations.

This is alarming.

 

[HotKey]

Thanks @jberryhill
Context of the situation is king, thanks for providing this context.

It is heartening to see that context, at least in this area of an increasingly non-contextual, mad mad world, still has its relevance in decision-making.

And yes @jberryhill , still keenly reading, listening and learning. Many thanks.

 

[RegDN]

If you didn't do anything infringing
don't worry
If they complain,
You need to reply to the Wiop email and explain the situation, and it is not infringing
just registered a domain name