poll Do you own a trademark for your domain(s)?

[MadAboutDomains]

Hello NPers,

I'm just wondering how many NPs members own a trademark and if so is it to protect a domain that you own?

I'm just wondering what motivation you had for registering your trademarks, is it to protect a domain?

Would you consider registering a trademark to protect your domain?

Cheers!

 

[ryan29]

I’d be interested in a discussion about the value of a trademark in relation to defending a domain against UDRP complaints.

I have a domain that I’d like to build something on and the backlog for getting trademarks in Canada is 3 years. I’ve been debating whether or not to price it out because $1-2k would probably be enough for me to collect any matching social media handles I don’t have.

Is dominating a namespace a good strategy for deterring others or is it and invitation to reverse domain name hijacking? Does having a really solid presence in a namespace make me a target or does it make the namespace unattractive to others?

 

[MadAboutDomains]

I’d be interested in a discussion about the value of a trademark in relation to defending a domain against UDRP complaints.

As far as I can tell, if you have a registered trademark then a UDRP is absolutely no use to anyone to retrieve a domain from you. Because you can prove that you have established rights. You'd probably be looking to law courts at that point.

(source)

"You have no rights or legitimate interests in respect of the domain name" AND

This cannot be proved wrong if you have a trademark, certainly not to the extent that the UDRP process can adjudicate whether your rights are valid or not in law.

 

[branding]

Hello NPers,

I'm just wondering how many NPs members own a trademark and if so is it to protect a domain that you own?

I'm just wondering what motivation you had for registering your trademarks, is it to protect a domain?

Would you consider registering a trademark to protect your domain?

Cheers!

I don't think registering a TM for a domain will help if you don't also use (or have intent) to use the domain/brand in trade.

I have a bunch of trademarks but that's only because that's for protecting actively trading brands.

Trademarks by definition are not designed to protect domain names, correct me if I'm wrong.

Furthermore, I doubt it's cost effective.

 

[AEProgram]

If it's a name you trademarked and you intend to sell it, it could stop serious buyers that lookup and see it's a trademark and don't bother trying to buy it

If I had a name I really planned on using for a project, I would trademark it

 

[MadAboutDomains]

If it's a name you trademarked and you intend to sell it, it could stop serious buyers that lookup and see it's a trademark and don't bother trying to buy it

If I had a name I really planned on using for a project, I would trademark it

You could mention that the trademark is to come with it as part of a sale. Problem sorted

 

[DomainNature]

What if I want to trademark a com domain just to prevent anyone to find alternative extensions and use the names to sell such products?
In this way he will be forced to buy my domain together with trademark.
Also how much it will cost? Looking to trademark allot of products and services.
Is it worth the hassle?

 

[MadAboutDomains]

What if I want to trademark a com domain just to prevent anyone to find alternative extensions and use the names to sell such products?
In this way he will be forced to buy my domain together with trademark.
Also how much it will cost? Looking to trademark allot of products and services.
Is it worth the hassle?

I would say that registering a domain to prevent other people from registering other domains would be a bad strategy. I don't think you're going to be able to force others to buy your domain, either. However, I think that having a trademark would help defend you against attack.

Trademarks are registered by territory, so if you trade under a name in one country and protect it via a registered trademark and nobody opposes it, you have a right to use it unhindered and protection can be pretty broad depending on the goods and service you have registered. I think that the only thing that is going to stop you is by someone taking you to court, or settling out of court with the complainant or someone revoking your IP.

As mentioned by @branding you NEED to use a trademark for trading, otherwise anyone can have your IP revoked for non-use. This is extremely important, but it wouldn't be up to a UDRP process to determine whether or not you used your mark, this would be for a court to decide, or for the trademark office in the respective territory to decide (I think anyway, the UDRP process isn't a court and your IP is valid until it is proven otherwise and protection officially revoked). Please God tell me this is the case @jberryhill?

Has anyone who has registered IP and use their trademark clearly in trade, who hasn't flagrantly and provably infringed on another parties trademark, ever lost UDRP? IE. it has been proven that the IP holder doesn't have "rights or legitimate interest" in a domain when they have a trademark to match? Maybe someone in the know can answer that.

Even if the party with registered rights have provably infringed on someone else's mark, it seems sensible to me to assume that a complaint against you would still fail the second test in UDRP, because you do have legitimate interests in the domain if you have a registered trademark that is identical or similar to the domain.

 

[MadAboutDomains]

Also how much it will cost?

It depends on the countries, or method you choose to register. I believe that registering in many territories using the Madrid protocol can be cheaper than going to each office individually.

TMs in the UK, EU and USA the cost varies, but it's between 250-800 USD for one class of goods of service, the more classes of goods and services you cover the more it costs, but this is generally per class and not per individual thing/product/service... hense that MASSIVE Meta trademark... though it's huge it probably didn't cost that much to file.

 

[branding]

@MadAboutDomains

If memory serves me right, @jberryhill touched upon this subject before. Can't seem to find the thread but the 'truth' is out there.... somewhere

 

[MadAboutDomains]

@MadAboutDomains

If memory serves me right, @jberryhill touched upon this subject before. Can't seem to find the thread but the 'truth' is out there.... somewhere

Thanks for letting me know. I'll see if I can find it.

 

[jberryhill]

As far as I can tell, if you have a registered trademark then a UDRP is absolutely no use to anyone to retrieve a domain from you.

Unless the UDRP panel believes that the trademark protection was obtained merely as a fig leaf for protecting the domain name. The earliest example of that was in the Madonna.com dispute, where the domain registrant had a Tunisian trademark registration:

https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0847.html

Certainly, it is possible for a Respondent to rely on a valid trademark registration to show prior rights under the Policy. However, it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. If an American-based Respondent could establish "rights" vis a vis an American Complainant through the expedient of securing a trademark registration in Tunisia, then the ICANN procedure would be rendered virtually useless. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.

Tunisian trademark registrations were popular at one point because they could be obtained in 24 hours, and were useful in the old Network Solutions trademark policy which preceded the UDRP for several years in the 1990's.

As also mentioned above, in the US and a number of other jurisdictions, one obtains trademark rights by use of a distinctive mark on goods and services, such that consumers can distinguish between goods or services of different origins or quality in the relevant market for those goods or services.

People have this idea that you fill out a form, name your "trademark", and claim it like Columbus landing in the Caribbean, and one gets a government monopoly of some kind in the "trademark".

As mentioned by @branding you NEED to use a trademark for trading, otherwise anyone can have your IP revoked for non-use.

Exactly. In the US, you need to show evidence of use of the mark on the goods and services in order to obtain registration. If the mark is not used, it can be cancelled. In the EU, you can obtain registration without showing use, but the registration likewise can be cancelled for non-use.

But, no, there is no point in obtaining trademark registration for a domain name or a word corresponding to a domain name, or your pet cat for that matter, merely because it will provide some magic amulet that will ward off evil spirits.