question Is this considered acting in bad faith?

[beginnnerdomainer]

I registered an expired domain from a company with reported $7.7m revenue. I didn't know until after I registered it. The company had the domain in 2015-2016 and had it trademarked but the trademark is now dead. They still sell products (I think) with the trademarked name. If I reach out to them and inquire if they want to buy it, would this be acting in bad faith? What if I reach out to their competitors and tell them it's an expired domain that has been trademarked before by a big company which adds credibility to the domain, is this acting in bad faith?

 

[LucyC]

If the domain name is distinctive to any of the company's IP assets (company identity, products/services) I would, by a general rule, stay well clear.

'Because they still have product listed on their pages with the trademarked name. And because I'd assume they wouldn't want competitors to have access to it and potentially take away from their revenue as it is a pretty niche product.'

The fact you see value/leverage in offering to sell it to a competitor 'take away from their revenue' feels to me like there is a clear distinction there and something even a competitor could not use in good faith.

Have you only checked the USPTO? My understanding is that this is just for US trademarks & patents; there are other systems/registers globally.

Have you just looked at trademarks? Just to quote you 'pretty niche product'; maybe the reason they 'abandoned' the TM is that they went for a patent instead, believing it is stronger/broader protection for their product, which I believe is a separate search to TMs? This might clear up why it's marked but you can't see it?

In this instance of a 'pretty niche product', my thoughts are (speaking as a businesswoman and what I would look at) that the patent would act in providing stronger protection over the actual product design or mechanism, whereas a trademark would only stop others from using the specific brand name or logo?

Just my thoughts!

 

[beginnnerdomainer]

Are you saying that you are not actually Turgon, King of Gondolin.



Yeah, well, I'm a lot nicer when I get paid for working, so think of it as my "fee". Not that it pays my bills or anything like, you know, those occasions when someone who is trying to make money thinks that relevant expertise experience and insight are actually worth something.

If you think I'm rude when I'm being helpful, wait until you get a load of my colleagues when they are out to get you. But I digress... I have to wrap this up since the weather is good and I want to get a bike ride in today.

Anyway, there's a difference between commentary that has identifiable people behind it, and people on the internet who would just as soon encourage others to eat detergent pods.

So far in "how much work and thought it really takes to actually analyze these kinds of questions", we have established that there is a company that makes a thing, calls it by a name, and had one of their marketing people do a less than stellar job of trying to register that name as a trademark quite a few years ago. From what can be gathered on the internet, they still sell the thing and they still call it by that name.

Now, the trademark application was refused as allegedly "descriptive" of the thing. It wasn't refused as "generic" for the the thing. So, on the one hand, you do have a statement from the authoritative US government agency to the effect that the name does not function as a trademark, and you have an apparent acquiescence by the maker of the thing in that statement. Certainly, they didn't challenge it.

On the other hand, another facet of US trademark law is that a descriptive term can become distinctive through continuous, longstanding exclusive use, such that consumers in the relevant market recognize the name as distinguishing the source origin of the goods. My favorite tired example is that if I refer to "American Airlines" most people in the US travel market will not think that I am collectively referring to airlines in America as a group, like United, Delta, JetBlue, and so on. Most people will assume that "American Airlines" is a reference to one airline in particular, because that phrase, while otherwise a descriptive term, has become exclusively associated with that one airline, because they have been doing it since 1939 and have become quite successful at it.

That's what we call "acquired distinctiveness". You can mix coca and cola with phosphoric acid, sugar and carbonated water, but the one company that's been doing it since 1886 is pretty well known for that, so you'd better pick another name than the obvious one. In fact, "Coca-Cola" was challenged as merely descriptive in court in 1910, and they won.

To determine whether a claimed mark - i.e. not a registered mark but something someone sticks "TM" next to in order to signal "whatever YOU think, WE think its our mark" - has acquired distinctiveness is a factual question, not a legal question, and it really depends on the market in question.

And so, we come to the Fluorosense handheld fluorometer:


Show attachment 265232

You can determine the likely presence of various chemical agents on the basis of measuring fluoresence, and these folks came up with kind of a clever name for their device. However, the USPTO took the position that since the name was similar to the physical property it measures, and because the person dealing with the application wasn't well versed in what they were doing, it didn't end well.

Really, the application itself is a good illustration of how well it works out when someone says, "Why pay an attorney, you can do it online yourself" which is true. You can probably cut out your infected appendix on your own with a pocket knife too, and I wouldn't doubt that people have successfully done that. But these things can appear deceptively simple.

One thing the trademark application tells us, by including a specimen of use, is that they've been making and selling these things for a really long time. Typically, the USPTO will accept a declaration that 'we've been selling this thing for five years on a continuous and substantially exclusive basis' as good enough evidence of acquired distinctiveness.

The problem is that I am not much of a relevant customer in the field of handheld fluorometers, so I don't know whether, in their market, people understand this alleged mark to refer exclusively to their stuff. One thing that can be useful to check is whether there's been any trademark litigation involving the company, which I would normally do, but I don't feel like it because I'm, you know, rude.

But what I can say is that using the Google Test, which I've talked about before, to do a casual look at how this spelling in particular is used, it sure looks like the alleged mark is strongly and consistently associated with this particular company's product - including a lot of third-party references which indicate this product in particular.

You can draw whatever conclusions from that you want.

The other thing in general is that this company makes a range of different products which it sells under different product names and, like most vendors of specialized equipment, probably aren't interested in running umpteen different websites, sets of email addresses, and so on, for every doodad they manufacture. Most likely if the name was important to them, they'd have hung onto it.

On the other hand, my next UDRP decision is going to involve a situation where the Complainant didn't renew their domain name back in 2013, and has decided eleven years later that they want it back, so stay tuned to see how that one pans out.

You might wonder "Why all the detail?" It's important to understand that a "simple question" may not have a simple answer. It's really easy to ask "how do magnets work", and I can say after a shedload of technical education and research that answering that question is a beast. So, once in a while I'll do this kind of thing as an illustration of how much work actually goes into analyzing a question like this when someone thinks "What a rip off to pay a lawyer a consultation fee to get a simple answer." You want simple answers, that's fine, but if you end up eating a detergent pod, user BasedPepe246 on StuffToEat.com isn't going to be around to blame.

Anyway, the day is still young, and I have puppies to kick and children's balloons to pop. So have a good one.

First I wanna thank you for all the information you gave me, I truly appreciate the time you took to respond so thoroughly to my post.

In regards to any litigation, I see Nalco Company LLC sued Turner Designs, Inc. for patent infringement over Turner Designs’ water-monitoring devices but Turner Designs won the case. Question, is it acting in bad faith if I reach out to Nalco Company to see if they want the domain?

I definitely see your point on them selling different products and not wanting to have a range of websites to look after, but they still have a link that leads directly to the FluoroSense fluorometer (I can't post links) and if it is a widely recognized term, then would it be safe to assume that people search FluoroSense.com to search for the product? I'm still new to domaining so forgive me if my questions aren't the right questions to ask or come across as a bit dumb.

If FluoroSense is a widely recognized term in the fluorometer market like your American Airlines example is in the airline industry, then I guess it wouldn't matter because it would be a case of being descriptive through long term use and that would by default give FluoroSense a TM even though their application was cancelled/abandoned years ago (If I understand everything correctly). I don't have info on that either, I'm still trying to get more information regarding that because I don't really know too much about fluorometers, only from what I've read in the last few days.

 

[beginnnerdomainer]

If the domain name is distinctive to any of the company's IP assets (company identity, products/services) I would, by a general rule, stay well clear.

'Because they still have product listed on their pages with the trademarked name. And because I'd assume they wouldn't want competitors to have access to it and potentially take away from their revenue as it is a pretty niche product.'

The fact you see value/leverage in offering to sell it to a competitor 'take away from their revenue' feels to me like there is a clear distinction there and something even a competitor could not use in good faith.

Have you only checked the USPTO? My understanding is that this is just for US trademarks & patents; there are other systems/registers globally.

Have you just looked at trademarks? Just to quote you 'pretty niche product'; maybe the reason they 'abandoned' the TM is that they went for a patent instead, believing it is stronger/broader protection for their product, which I believe is a separate search to TMs? This might clear up why it's marked but you can't see it?

In this instance of a 'pretty niche product', my thoughts are (speaking as a businesswoman and what I would look at) that the patent would act in providing stronger protection over the actual product design or mechanism, whereas a trademark would only stop others from using the specific brand name or logo?

Just my thoughts!

'The fact you see value/leverage in offering to sell it to a competitor 'take away from their revenue' feels to me like there is a clear distinction there and something even a competitor could not use in good faith.'

I don't really see it that way. I initially found the expired domain on expireddomains.net and it looked like an interesting name. I put it in a valuation tool someone posted here that worked with ChatGPT (I know, valuation tools aren't trustworthy and pretty useless) and it came out that it was worth registering. It wasn't until later that I saw that a company has it as a product and there was issues with trademarks that involved this product.

If the company didn't follow all the rules to get their product name trademarked, and were too cheap or lazy to hire a lawyer to go through the trademarking process and instead had their marketing department do it, why would me selling the product name that fell into my lap to a competitor make me a bad guy if it was never trademarked to begin with? It's an eat or be eaten world, and I'm sure if I had failed to trademark anything, I would not be given exclusivity towards something that I didn't follow the rules to trademark.

I guess the question really is if FluoroSense is seen as a recognized term in the fluorometer market like the other guy said. If that's the case, then I can see why it would be unethical and acting in bad faith to sell it to competitors. If not, then I will absolutely be taking advantage of this opportunity.

 

[LucyC]

'I initially found the expired domain on expireddomains.net and it looked like an interesting name. I put it in a valuation tool someone posted here that worked with ChatGPT (I know, valuation tools aren't trustworthy and pretty useless) and it came out that it was worth registering. It wasn't until later that I saw that a company has it as a product and there was issues with trademarks that involved this product.' -

Where your registration may have been innocent, once
'It wasn't until later that I saw that a company has it as a product and there was issues with trademarks that involved this product.' - you have that information, profiting from their (minimum) common law rights/goodwill in the way which you describe above would be considered bad faith. It's the intent.

'It's an eat or be eaten world' - I've dropped domains similar to a trademark I own (hyphenated variants). Let a person try to profit off my IP. I might even sit back and let you build something up, then 'eat' into everything you've made on the back of it.

 

[beginnnerdomainer]

'I initially found the expired domain on expireddomains.net and it looked like an interesting name. I put it in a valuation tool someone posted here that worked with ChatGPT (I know, valuation tools aren't trustworthy and pretty useless) and it came out that it was worth registering. It wasn't until later that I saw that a company has it as a product and there was issues with trademarks that involved this product.' -

Where your registration may have been innocent, once
'It wasn't until later that I saw that a company has it as a product and there was issues with trademarks that involved this product.' - you have that information, profiting from their (minimum) common law rights/goodwill in the way which you describe above would be considered bad faith. It's the intent.

'It's an eat or be eaten world' - I've dropped domains similar to a trademark I own (hyphenated variants). Let a person try to profit off my IP. I might even sit back and let you build something up, then 'eat' into everything you've made on the back of it.

So then if I just list the domain and don't reach out to competitors, that wouldn't be considered bad faith? How far does the common law rights extend? Is there a minimum amount of $ that a product has to make before it's considered covered under this law? Again, they never actually registered the trademark. So as long as they sell it, and put a name on it, without registering it, that's considered their trademark?

 

[DN Universal]

On the other hand, my next UDRP decision is going to involve a situation where the Complainant didn't renew their domain name back in 2013, and has decided eleven years later that they want it back, so stay tuned to see how that one pans out.

This raises an eyebrow... I hope these type of UDRP don't become the norm..

 

[jberryhill]

This raises an eyebrow... I hope these type of UDRP don't become the norm..

Oh, it’s a doozy, as usual.

Question, is it acting in bad faith if I reach out to Nalco Company to see if they want the domain?

Put simply, it’s wildly inappropriate, for reasons succinctly noted above by @LucyC

 

[beginnnerdomainer]

Oh, it’s a doozy, as usual.



Put simply, it’s wildly inappropriate, for reasons succinctly noted above by @LucyC

Would you let this name expire then?

 

[falez]

At least in Canada, even if the trademark is no longer registered, that does not mean the trademark is invalid. You can be deemed to have a trademark as long as you have been using it in business, even without registering it. So, if they are still selling products with the trademark, then the trademark is not dead but alive and well. However, I am not a lawyer, so I would suggest speaking to one if you believe it is worth it.

 

[jberryhill]

So as long as they sell it, and put a name on it, without registering it, that's considered their trademark?

Yes. If the term is distinctive in that marketplace so that it can function as an indicator of the source or origin of the goods which allows relevant consumers to distinguish between their fluorometers and someone else's fluorometers.

The basic problem shared by about 99% of the people feeding each other misinformation on this forum, is that they think registering a trademark is necessary to having a trademark.

Even if you started with the most basic primer on what is a trademark, like the Wikipedia entry for "Trademark", you would immediately be informed that what most people on this forum believe is simply not true.

https://en.wikipedia.org/wiki/Trademark

Trademark protection can be acquired through registration and/or, in certain countries, through use.

Globally, the most common method for establishing trademark rights is registration. Most countries operate under a "first-to-file" system, which grants rights to the first entity to register the mark. However, well-known trademarks are an exception, as they may receive protection even without registration.

In contrast, a few countries, like the United States, Canada, and Australia, follow a "first-to-use" or hybrid system, where using the mark in commerce can establish certain rights, even without registration. However, registration in these countries still provides stronger legal protection and enforcement.

And it is not just the US, Canada and Australia, either. It is all UK Commonwealth countries, including India, etc..

 

[beginnnerdomainer]

Yes. If the term is distinctive in that marketplace so that it can function as an indicator of the source or origin of the goods which allows relevant consumers to distinguish between their fluorometers and someone else's fluorometers.

The basic problem shared by about 99% of the people feeding each other misinformation on this forum, is that they think registering a trademark is necessary to having a trademark.

Even if you started with the most basic primer on what is a trademark, like the Wikipedia entry for "Trademark", you would immediately be informed that what most people on this forum believe is simply not true.


Trademark protection can be acquired through registration and/or, in certain countries, through use.

Globally, the most common method for establishing trademark rights is registration. Most countries operate under a "first-to-file" system, which grants rights to the first entity to register the mark. However, well-known trademarks are an exception, as they may receive protection even without registration.

In contrast, a few countries, like the United States, Canada, and Australia, follow a "first-to-use" or hybrid system, where using the mark in commerce can establish certain rights, even without registration. However, registration in these countries still provides stronger legal protection and enforcement.

And it is not just the US, Canada and Australia, either. It is all UK Commonwealth countries, including India, etc..

Thank you kindly. I guess I'm going to just let it expire.

 

[LucyC]

So as long as they sell it, and put a name on it, without registering it, that's considered their trademark?

Absolutely, they would argue they have demonstrated a bona fide interest through commercial use of the name. To retain it rightfully, you would also need to argue a legitimate, bona fide, ‘good faith’ reason for use...

Considering, what's already been established (with their distinction to the name and all) and your previously expressed intentions on no other than a public forum.

Perhaps a poor example, but in an opposite fashion, it may be generally assumed that someone signing/committing themselves to a contract it's without question legally enforceable/'binding' - but in fact, not necessarily if the contract terms are deemed unfair/unreasonable (Unfair Contract Terms Act 1977 in the UK though I believe the same principles are adopted most places globally?).

A big part of that comes down to fairness/reasonableness, akin to concepts in common law/goodwill protections.

Yes, the business world can get extremely ugly, but there are elements of 'reasonableness' when sh*t hits the fan. The question is - they can strongly argue a reasonable/justified interest in a distinctive mark, can you?

If you can't, then yes - I would let it expire.

Though personally (just what I would consider doing, this may put me in bad advice theatre as I haven't come across this scenario yet - I'm speaking theoretically) I would also consider reaching out and offering it to them, some new business connections may come out of it. Additionally, takes it out the loop for someone else to make the same mistake (if the business wants it that is), and also some good rep for the domainer community.

 

[beginnnerdomainer]

Absolutely, they would argue they have demonstrated a bona fide interest through commercial use of the name. To retain it rightfully, you would also need to argue a legitimate, bona fide, ‘good faith’ reason for use...

Considering, what's already been established (with their distinction to the name and all) and your previously expressed intentions on no other than a public forum.

Perhaps a poor example, but in an opposite fashion, it may be generally assumed that someone signing/committing themselves to a contract it's without question legally enforceable/'binding' - but in fact, not necessarily if the contract terms are deemed unfair/unreasonable (Unfair Contract Terms Act 1977 in the UK though I believe the same principles are adopted most places globally?).

A big part of that comes down to fairness/reasonableness, akin to concepts in common law/goodwill protections.

Yes, the business world can get extremely ugly, but there are elements of 'reasonableness' when sh*t hits the fan. The question is - they can strongly argue a reasonable/justified interest in a distinctive mark, can you?

If you can't, then yes - I would let it expire.

Though personally (just what I would consider doing, this may put me in bad advice theatre as I haven't come across this scenario yet - I'm speaking theoretically) I would also consider reaching out and offering it to them, some new business connections may come out of it. Additionally, takes it out the loop for someone else to make the same mistake (if the business wants it that is), and also some good rep for the domainer community.

By offering it to them, do you mean for free? Or ask them if they'd like it for a price. I'm not sure what business connections would do for me as I'm just a beginner domainer and don't have any background in business.

 

[LucyC]

By offering it to them, do you mean for free? Or ask them if they'd like it for a price. I'm not sure what business connections would do for me as I'm just a beginner domainer and don't have any background in business.

No free, exhibiting goodwill.

If we've established it's distinctive to them, with or without a registered trademark you have no right to profit from that name.

I never like to rule anything out, 2 years ago I didn't picture I would be in the artisanal food business yet here I am.

 

[beginnnerdomainer]

I ended up reaching out to Turner Designs with no response. I guess I'll just let it expire.