question Infringement: Giving Consideration for USPTO Class Leeway?

[Charac]

When registering domains, and performing USPTO searches....

Everyone seems leery of infringement. Registrars, aftermarket platforms, and those using them.

Q: how much responsibility lies with the unknown and unidentified buyer who should be performing due diligence checks prior to buying an aftermarket domain? Given that close names can have multiple live registrations under different classes (just search "Embody" for example)

Many word marks relate to classes that are obvious. However sellers know not what buyers intend to use the name for.

For instance, one word mark can have a class that relates to performing specific types of work. Whereas another almost identical mark can relate a USPTO class entirely different: news coverage or trends on this topic.

How does this all hash out?

 

[Kyle Tully]

Q: how much responsibility lies with the unknown and unidentified buyer who should be performing due diligence checks prior to buying an aftermarket domain? Given that close names can have multiple live registrations under different classes (just search "Embody" for example)

100% on the buyer.

 

[pb]

When buying land, it's on you to check if they're not planning to build a highway there. When buying a domain, it's on you to check if you're not going to be run over by a TM truck. The seller has no obligation to inform you and they might not be aware of it in the first place.

 

[Charac]

100% on the buyer.

When buying land, it's on you to check if they're not planning to build a highway there. When buying a domain, it's on you to check if you're not going to be run over by a TM truck. The seller has no obligation to inform you and they might not be aware of it in the first place.

Yet secondary market agreements such as SEDO. State the Seller warrants their listed names: have not been used in a way to infringe on 3rd parties (including trademarks) or.... rights to register are not being challenged

With used being the operative word here? No worries about unused but registered domains being the hard and fast rule here? No need to go through possibly TM violation factors? (while previously dropped domain histories may be hard to come by)

Although a TM mark holder say, as this applies a product/service that does not have an SLD name. May potentially challenge a registrants right to a domain at some future point? (whoever currently holds it)

Sound right but not airtight?

 

[pb]

There is an important distinction between current situation and potential situation. These rules are meant to secure marketplace's interest in the case that the name turns out not to be transferable because of court order or some other kind of lock, in such case it is on the seller to rectify the problem. But no one - not the marketplace, not the broker, not the seller - can guarantee that the domain is not similar to some trademark somewhere; in fact I would guess that most are, certainly the more valuable ones.

 

[jberryhill]

Yet secondary market agreements such as SEDO. State the Seller warrants their listed names: have not been used in a way to infringe on 3rd parties (including trademarks) or.... rights to register are not being challenged

And what do you suppose happens when the Seller isn't telling the truth?

 

[Charac]

And what do you suppose happens when the Seller isn't telling the truth?

Yet secondary market agreements such as SEDO. State the Seller warrants their listed names: have not been used in a way to infringe on 3rd parties (including trademarks) or.... rights to register are not being challenged :

First part: "Seller warrants their listed names: have not been used in a way to infringe on 3rd parties...

On face value this clearly seems to apply to domains in use, as defined by actual usage (squatting remains an unknown until formally resolved ). How can a domain infringe on a third party unless it is online and with a developed purpose revealed? Especially while the USPTO now operates under ever-increasing pressure to issue marks for more similar or closely resembling names that relate to more specialized purposes.

Second part: "Rights to register are not being challenged."

For a registered offline domain; would not the current domain owner OR current registrant have been given a challenge notice? Rendering this obvious?

@jberryhill For domains that have not been online -- as far as telling the truth -- for such a test to pertain, wouldn't ICANN probably have had to reissue a dropped domain from a previous registrant who has violated another's trademark rights? This could be very difficult if not impossible to discover.

 

[DediRock]

Buyers are responsible for checking trademarks before buying aftermarket domains. Sellers aren’t liable for potential infringements.

 

[jberryhill]

My point was merely that the seller warranty in marketplaces like Sedo, etc., is of zero value in any practical sense. Yeah, okay, sure, go sue some guy in Eastern Jibip for breach of that warranty. It's simply there, as are all of the Sedo terms, to protect Sedo from a buyer blaming them.

But they are not making any warranty as to your intended use of the domain name, whatever that may be.

As in the other thread, I have a hard time figuring out what you are trying to say. But, in general, I would suggest you are way too hung up on the USPTO as the ultimate authority on trademarks. The USPTO registers marks that meet certain conditions. They do not determine the scope of a mark or what acts might be infringing a mark.

As to whether a domain name needs to be used in order to violate someone else's trademark rights in general, the point of the ACPA was to get around the "use" requirement. In a hyper-technical sense, yes, "infringement" can have a particular meaning, but I would read those terms as applying to any sort of rights violation, given the context of a domain name marketplace.