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How to proceed on this outbound.

Labeled as advice in Domain Selling and Domain Sales started by DeliDomains, Jul 9, 2019.

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  1. Ategy.com

    Ategy.com NameCult.com Gold Account VIP

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    What you don't seem to understand is that "registering" a trademark means absolutely nothing other than making it easier to defend.

    Trademarks are USAGE based ... meaning that the moment a company starts doing business under their established mark, it automatically has a trademark in the trademark class(es) that it does business in. Even if they never register they still have a 100% legal trademark protection.

    The only difference if they didn't register it is that it's harder for them to prove .. but that isn't very difficult if it's a real company who has had their company name on their invoices for years (or even a week .. it actually doesn't matter if you bought the domain after the date in question). The only difference if they did register it .. is that the registration serves as the proof itself so it's much easier for them to defend .. either way, registered or not .. they have the EXACT same trademark protections.

    Again .. Yes .. depending on the specific words, if the scope of the words make it so that businesses outside of their trademark class(es) could use the name then a judge/UDRP panellist might or might not see an conflict.

    HOWEVER .. and most importantly .. the moment you approach the company with a moderately confusingly similar domain asking for money .. then you are trying to profit from their success which they build on their brand .. so you are 100% doing something that is 100% not allowed under trademark rules and laws.

    "Moderately confusing" sometimes can be complicated to assess (even a THE can make a difference depending on the rest) .. but it most definitely includes an extra or missing hyphen.


    That being said .. at the end of the day .. the legal process is more expensive and a bigger pain in the butt than just paying $1000. However .. if he really wanted to .. he could have taken legal action against you .. and he most definitely would have won .. even if he never "registered" his trademark.


    Good luck with it all the same .. lol
     
    Last edited: Jul 10, 2019
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. frank-germany

    frank-germany domainer since 2001 / musician Gold Account VIP

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  3. karmaco

    karmaco Top Member VIP

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    Never ever use someone’s lack of a trademark as an argument. Just take the money and move on.
     
  4. IMEZI

    IMEZI Top Member VIP ★★★★★★★★★★

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    take the money and move on
     
  5. Jv1999

    Jv1999 Spamming Exo: Dark Merc of the Exo-Tower VIP

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    I lost $1300 to $1600 in one week from countering already good offers.

    At the time I thought I didn't need the cash, and that they'd offer more... but they didn't. This week i needed cash and so I accepted 150 on one domain that had a 250 offer i rejected. If I had the full 1600, I'd be living like a king rn lol. Instead I'm strugglin af!

    Don't be like me... you have him as your only end user. And somehow by some twist of fate you turned a 500 offer into 1000. Accept it and run faster than gump!
     
  6. DeliDomains

    DeliDomains Oswin

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    You mean to say if I start a business with the word " Water" then I have the legal rights over other businesses in usage of the word "water" even without registering my trademarks and intellectual properties?

    If you don't register your trademark you got nothing to prove in court.
    We cannot search the whole world to see how many business are using the word "Water" and fear that they would sue you even without any trademarks registered.

    I can sell my grandmother's apple pie on apple.xyz domain as long as apple inc does not have any trademark registered on apple pie products.


    If your building a brand, a business should make sure they own their rights to all their intellectual properties. Else its like building an office on a piece of land which you don't own.
     
  7. Ategy.com

    Ategy.com NameCult.com Gold Account VIP

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    Yes ... 100% .. as hard as it is to believe!

    Google "Common Law Trademarks" and take a leap down the rabbit hole .. lol

    https://www.legalzoom.com/articles/what-are-common-law-trademark-rights
    If you have a business name, product name, tagline, or logo that you use regularly, you may have common law trademark rights—even if you have never registered your trademarks with any governmental agency.

    Trademarks are words, phrases, symbols, or sounds that you use to identify your business. Famous trademarks include everything from the McDonald's golden arches to Nike's “Just Do It" slogan, to the business name Amazon.com. Trademarks are an important tool to prevent other businesses from using similar marks that might confuse your customers.

    You acquire common law trademark rights just by using your trademark in your business. You can strengthen those rights by registering your trademarks with the U.S. Patent and Trademark Office, or USPTO.


    It's isn't quite as simple as that .. trademark class and region come into play.

    Also .. nobody could ever claim rights over a generic like "Water" in any food category. However if you started selling a software application called "Water", then you would have right's to "Water" in the software TM class.

    In a food class you could start using "Red Water" and be protected. But you couldn't use "Water" or even "Blue Water" (because blue is a commonly used descriptor of the industry generic word "Water")

    In the same way if you tried to register "Water" or "Blue Water" it would very likely be rejected if you were registering for a food product.


    For sure they do. All their internal documentation could be used. Client witnesses. Invoices they issued using the mark (very useful because they have the date on them).


    This is where you are somewhat right. Although if your common law trademark is so strong (Microsoft, Coke, and even slightly less popular) that a judge or UDRP panellist believes you very likely knew about the brandl, then you will lose.

    However .. in most cases where it's some small 2-3 person company operating out of a basement, it is up to the trademark holder to actively defend their mark. If they didn't contact you within a few years then in most cases you will be same and can continue to use the trademark.

    The only real way you'd get in serious trouble is if you are proven to have known about their trademark ...
    ... and that's where all this ends ...
    ... the simple act of contacting them inquiring if they want to buy the domain is irrefutable proof that you know about them! And then the act of trying to sell it to them is you trying to profit on their trademark.

    So therefore by doing outbound on a company with an existing confusingly similar mark, you are in fact proving yourself guilty.


    All that said ... if it's a very common trademark word/term combination .. then things get a little fuzzier. But if there's only one or two X+Y in the world, then you're seriously asking for trouble if the other company knows and understands trademarks.

    Anybody can sell Apple Pie on Apple.xyz since "Apple" would be considered a generic word within any food category .. so effectively nobody could ever have a trademark on the term "Apple" when dealing with food. Which means that anybody can use it.


    It's not like that with trademarks ... using this analogy, effectively if you build on a piece of land (/use a trademark) before anyone else .. then that land (/trademark) is yours.


    Congratulations .. now you know how trademarks really work .. and why most domainers get it so wrong all the time! ;)
     
  8. DeliDomains

    DeliDomains Oswin

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    Well I still would not agree with you on non registered trademarks,
    The common law trademark is a big grey area,
    Where as I agree, if your product is Blue Water with a trademark, then I would not sell anything with any coloured water.
    To conclude my take.....
    a) You need to be smart as a Domainer, Know your pricing, whom to approach and when to pull off when dealing with any grey area trademarks.

    b) Do not sell, advertise or profit from similar products to the orginal even without trademarks. you can bury yourself deep here.

    c) Registered ones are a BIG NO.
     
  9. MikeHawk

    MikeHawk Established Member

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    You better take the $1K and run faster than Speedy Gonzales. A good ROI is a good ROI.
     
  10. The Durfer

    The Durfer Upgraded Member Gold Account VIP

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    take it and walk away.
     
  11. dande

    dande UNNATURE.COM VIP

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    You know ASAP.TV is currently on sale? :xf.cool:

    If the domain is hand registered, the ROI must be good. Sell and take your profit.
     
  12. DeliDomains

    DeliDomains Oswin

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    Ok now since the deal is done and the monies received I am revealing the domain name and see how the reactions come in. Will be a good learning experience.

    B/E/S/T/E/A/R/S . King
    Outbound Sale
    Sale Amount $1050
    Net $997.50
    Buy price $22
    Hold time 8 months
     
  13. infosec3

    infosec3 BrandSearching.COM JUST LAUNCHED Gold Account VIP

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    Nice name. Congratulations!

    Given the circumstances, both you and the buyer got a great deal, in my opinion.
     

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