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Geo-Domains And Trademarks

Labeled as question in Legal Discussion, started by mindways, May 24, 2020

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  1. mindways

    mindways Established Member

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    Hey all!

    Okay, so it is well known that US government doesn't accept trademarks based on 'purely' geological names. A major number of domainers invest in [ geo + generic word ] names. There is even a popular guide on namepros on how to do that.

    While, purely geological names cannot be trademarked, a heavy amount of geo + word names have live trademarks on them. If you search 'Dallas' at TESS database there are about 1300 results, few examples are Dallas Financial Planners, Dallas College, Dallas Retro, and these are live.

    So, from my understanding, these names are trademarked and if someone tries to outbound to such brands looking to sell his domain, he could be well labelled as cybersquatter and possibly sued at that.

    However, seeing the vast number of investments and sales in geo domains, I'm pretty sure that I'm mistaken somewhere in this area.

    So, what are your thoughts about it? Has any of you encountered such situation? Or do you have some knowledge that can prove that these names can be sold legally? Would love to hear opinions from you all!
     
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  2. wurdd

    wurdd Restricted (15-30%)

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    Dallas Volcano comes to mind.
     
  3. mindways

    mindways Established Member

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    Well... thanks for leaving a completely irrevelant reply. Much appreciated. I'm not sure if there has been such rememberable and impactful volcano in Dallas...
     
  4. ecalc

    ecalc Top Contributor VIP ★★★★★★★★★★

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    Hi mindways, just pointing out that your premise is not well known, USPTO does register TMs based on pure geo names. Using your example Dallas, see registration records 4070378, 4708366 and 4894805 in uspto.gov database. If you ask a mod to move your thread to the Legal Discussion category you may get professional feedback on your broader questions, good luck!
     
  5. mindways

    mindways Established Member

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    I see. By well known, I didn't mean to say that there is not a single trademark for purely geological name.

    Still pointing that out helped, thanks, already seems risky to me. As for the thread, I'll leave it to mod to change it or not.
     
  6. Mytz.com

    Mytz.com Top 4L [email protected] IEIE.com CUTU.com NESU.com KKIK.com VIP Gold Account

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    Thank you for sharing
     
  7. MadAboutDomains

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

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    Of course the general advice is that you shouldn't offer your domains to known trademark holders otherwise you risk them using their IP against you to seize it from you.

    But it depends on the trademark and you should look at the details of the IP for the person/corporation that you are targeting. Take these trademarks:

    The first one has a trademark that doesn't have a disclaimer for the word DALLAS as this is integral to their trademark (they don't have exclusivity of the word 'DEMOLITION'), but they do for DALLAS DEMOLITION in it's entirety as they claimed in their application that it has become synonymous with them due to their exclusive use of the mark.

    The last two cannot claim any kind of claim or exclusivity to the use of the word ''DALLAS" for the classes for which their marks intend to protected, because their disclaimers explicitly stipulate against it based on their use of the name, they are using them as

    So it depends and requires additional investigation to determine how hot the water is that you're wading into...
     
  8. mindways

    mindways Established Member

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    So basically I have to search TM's like in normal domains and just because the domain has location in it and appears to be generic, it won't make any difference or give me leeway (legally), if a similar name is already trademarked. Geo-domains are no different from normal domains.

    Is that about it?
     
    Last edited: May 25, 2020
  9. MadAboutDomains

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

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    You mentioned outbounding, so if you're going to outbound a domain to companies with similar IP then research really is key to knowing whether you're putting your names at risk or not.

    Setting aside outbounding for a second, when it comes to general registrations and use of geo domains it's a completely different ball game.

    It doesn't matter how many people have a trademark that contain said geo location, the key is how you use the domain.

    If I register a domain, eg dallas.net and there's a dog biscuit brand called Dallas (whether they have a reg trademark or not) and I start trying to sell dog biscuits too on that domain then you can see where problems can arise.

    These problems would be compounded if I tried to offer the domain to the Dallas dog biscuit brand as well. It's basically giving them a free pass to steal my domain.

    But it's worse when you haven't got a genuine use for a name yet and you're trying to sell it to an IP holder.

    When it comes to any domain, geo or not, it depends on the circumstances of the registration. Using the aforementioned trademarks for an example... If I set up a website called "tortoise-demolition-dallas.com" and I'm a demolition company in Dallas then quite frankly Dallas Demolition wouldn't have a leg to stand on because the name is purely descriptive of the nature of the business and it's geographical location. In this example I have a genuine use for the name.

    On the other hand if I owned tortoise-demolition-dallas.com, I never used the name and I just offered it to Dallas Demolition 5 days after registration with a buy it now price of $500,000 USD and threaten them that I'll put porn on it if they don't cough up... Then I'll have immediate issues.

    It would be slightly different if I owned Dallas.net though, because they don't have exclusivity on the word Dallas and they only have protection for specific classes. I could keep the name and never offer it for sale directly to the demolition company and then there would be no reason for anyone to associate my registration with their demolition company. I could even develop it into something that's not demolition related with no problems at all. But if I offer it to the demolition company then there could be grounds for them to persuade a UDRP panel or a judge that you're trying to profit from their name.

    However, the fact that many people have trademark registrations including the same term is to your advantage as long as you're careful that you don't draw attention to yourself to a specific trademark holder. There have been many successful UDRP defences where the respondent has argued that a word or phrase is used by so many people that it cannot be argued that the phrase is instantly recognised as being associated with a specific trademark holder because there are so many of them.

    When you outbound to someone specific this can no longer be used as effectively as a defence because you have established association between your registration and their trademark. That's why you have to be careful and informed before you do anything.
     
    Last edited: May 26, 2020
  10. mindways

    mindways Established Member

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    Thanks very much for the information! Although the thread seems to heading towards a slightly different direction. I know about the basics of trademarks and UDRP policies and how outbounding could result in cybersquatting (as the term is used in original post).

    What I wanted to know was that is a trademarked Geographical or geo+word name any different from a simple trademark.

    But as you've mentioned in your answer, I'd conclude that they are same. Outbounding a domain to a trademarked geo-name would result in cybersquatting, like if I go offer DallasHotels(.com) to Drey Hotel Dallas.

    One thing I'd like to know about is, you mentioned offering a very high price and further threatening the IP holder would cause problem. So, offering them a low price like 200-500$ and letting them have the option of rejection (like without any threat) wouldn't cause the problem? Even if they own IP rights? Putting UDRP fees aside they are fully able act legally against this right?
     
  11. MadAboutDomains

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

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    With all of the facts in hand I would conclude the opposite for that particular domain. Drey Hotel Dallas have no exclusive rights to the words 'Dallas' or 'Hotel', so DallasHotels.com is generic enough for me to conclude that it isn't that risky to offer them that domain, however it isn't completely without risk. UDRP and law suits can go either way if your defense isn't strong enough.

    What I'm trying to express is that there is no "lazy" way of determining if you're risking your domains or not without consulting the details of their intellectual property.

    There is no fixed amount that would be safe in this regard. If you're offering an IP holder a domain that actually infringes on their rights, though unlikely if you're offering it as a low amount, it isn't completely without risk either. Some companies go after people just to make an example out of them even if it'll cost them more than a measly $200 USD.
     
    Last edited: May 26, 2020
  12. mindways

    mindways Established Member

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    Alright, I get it! Thanks again
     
  13. Ajet

    Ajet Established Member

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    Hello at mindways, can you please share the link to the thread where Geo and generic words combination was discussed?
    Thanks.
     
  14. mindways

    mindways Established Member

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    Hi Ajet, if you're referring to the guide that I mentioned in original post, then its here;
    namepros(.)com/blog/how-do-you-sell-geo-targeted-domain-names.961186/
     
  15. Ajet

    Ajet Established Member

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    oh!
    Thanks so much.
     
  16. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    https://www.namepros.com/threads/trademark-question.1190358/

    ...and please read to the end where I discuss the difference between "Riverside Bakery" and "Indianapolis Motor Speedway".

    It is possible for a geographically descriptive term to acquire distinctiveness as a mark.
     
    Last edited: May 29, 2020

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