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My Story of Why You Should Never Buy Trademarked Domain Names!

Labeled as advice in Domain Industry News, started by Omar Negron, Dec 3, 2020

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  1. Omar Negron

    Omar Negron Top Contributor VIP

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    Hey everyone,

    I put a new blog post discussing my story of when I almost got sued by a multi-billion dollar company in regards to a owning a trademarked domain name.

    I'll discuss:
    • Why you should think twice about buying a trademarked domain name
    • Receiving the cease and desist letter
    • What I did to fix the issue
    • How and why I fought back
    • Plus much more...
    You can view the blog post here.

    Feel free to leave your thoughts!

    Thanks.

    -Omar
     
    Last edited: Dec 3, 2020
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. koolishman

    koolishman Top Contributor VIP Blue Account

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    So, you did not redirect the first domain to new site?
     
    Last edited: Dec 3, 2020
  3. Mr. Deleted

    Mr. Deleted Slabaugh.com 800-266-2728 VIP ★★★★★★★★★★

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    Thats what I was going to ask.
     
  4. MapleDots

    MapleDots Top Contributor VIP

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    It's a great story omar but lacks detail, which means in a month everyone will forget about the post.
    The story would have carried a lot more weight had you published the name of the site before and after the ordeal.
     
    Last edited: Dec 3, 2020
  5. du6262

    du6262 Established Member

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    Thank you for reminding:xf.smile:
     
  6. Omar Negron

    Omar Negron Top Contributor VIP

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    No. Once I got the notice from the company I completely deleted that domain name out of my registrar account. If I were to redirect it, technically I would still own a trademarked name and I believe they would still pursue legal action if they were serious.

    That's cool and thanks for your opinion. Since I started blogging about domaining way back when, I don't put specifics on the exact domains I sell or in this case, the domain I got a cease and desist letter for. Just not something I feel comfortable with. I will give as much detail as I can without revealing the actual domain. Hopefully some people are OK with that.

    Cool! Your welcome!
     
  7. GreatBrand.in

    GreatBrand.in Established Member

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    Your story is very relevant in today's world and thus your content and blog here received genuine traffic.

    You started your story on strong ground and build the initial narrative quite well but when we reader started enjoying and looking for more detail information, you abruptly ended just like any old "Art" movie or parked domain :)
     
    Last edited: Dec 3, 2020
  8. platey

    platey Top Contributor VIP

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    At some point trademarks will stop the internet

    Because trademarks were existed pre the invention of the internet

    The trademark database should be added to every domain name registrar so when a person types a domain name in to a donain name registrar and presses search to check its availability that same search should show any and all trademarks that that domain name breaches if at all etc thus making it inpossible for a person or business to buy a trademark infringed domain name etc

    Companies are responsible for buying any and or all domain names that infringe any and or all trademarks they may and or may not own

    A companies digital incompetence isnt the problem of a domain nane investor despite a company using dollops of dough trying to pretend they are not inconpetent

    Allegedly

    The digital infrastructure of the domain name industry is far behind where it should be by some considerable distance
     
  9. pablohc86

    pablohc86 Top Contributor VIP ★★★★★★★★★★

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    well... in fact it's possible to own a trademarked domain.
    Problems come when you earn money without to be allowed by the TM holder or when you try to sell it to the TM holder or also if you are using the domain with bad faith.

    I also want to add that anyone could be sued by a company also if they have not registered a TM but they are very well known with the name of your domain name.

    Cease and desist letters are a very kind approach as you can delete the name or stop the monetization and all is fine.

    Also UDRP can be not too much harmful as in the worst scenario you lose the domain name + up to 4500$ (cost with 3 panelists udrp).

    I think the most scaring thing is the ACPA lawsuits where if you are declared guilty it's not hard to get charged with a 5 figure fine (other than domain lost ).


    Btw if i register and develop: AppleFanBoyNumberOne.com I can stay 100% quiet till the website makes 0$ and I'm using in in good faith
     
  10. Omar Negron

    Omar Negron Top Contributor VIP

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    That would be a great feature I would love to see registrars add. I highly doubt it would ever happen but would be cool!
     
  11. MapleDots

    MapleDots Top Contributor VIP

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    I think Estibot has that feature
     
  12. Omar Negron

    Omar Negron Top Contributor VIP

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    Awesome! Thanks I'll look into that.
     
  13. pb

    pb Top Contributor VIP ★★★★★★★★★★

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    Not all trademarks are created equal. Common-word trademarks are only protected in (usually) narrow classes, so you can have a domain incorporating that word and they won't have any leverage unless you start treading on "their" classes. Also most of C&D letters are just bullying. I dismissed many of them without seeing any action taken afterwards. Of course only when I was sure I didn't infringe. Sometimes you just know they're right and then it's better to comply, as you did.
     
  14. Omar Negron

    Omar Negron Top Contributor VIP

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    Agreed. In the example I put on my website, I used "Apple". That is obviously a generic term and no one should be able to trademark the word apple. But if you made a website in regards to electronics and are referring to the apple branded products, well then that is just asking for trouble.

    Thanks for sharing!
     
  15. DigitalRoar

    DigitalRoar Investor & Creator VIP

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    There's a big difference in registering a trademarked name and using it in violation of the trademark. Someone claimed to have a trademark on a generic word, and demanded I hand it over for some of their products (lol) when I responded that there are many with the same word trademarked and I am not violating any of them, he stopped bothering me.

    The only way I would see an issue is if you specifically were cyber squatting that company's trademark, registering the domain after their registration and trying to sell it to them. Its pretty obvious if it's a made up word that only they use.
     
    Last edited: Dec 5, 2020
  16. bmugford

    bmugford www.DataCube.com PRO VIP ICA Member ★★★★★★★★★★

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    Thanks for sharing. TM are certainly a gray area.

    The more fanciful the term the more protection it has. You can even have several well known companies using the same term for different uses, Delta for instance.

    However, you better be dealing in domains that are at least defensible. You can normally tell at first glance if that is the case or not.

    Also, as far as the US legal system goes, the merits of the case often only mean so much. There is a saying that you get the justice you can afford. Good luck going against a massive corporation in a legal fight.

    I have dealt with many legal threats over the years, some from major companies. I have beat back meritless threats from companies like Sony, Edible Arrangements, and others for generic domains.

    There are other times I thought a complaint had more merit, where I reached an amicable solution based on information provided.

    Brad
     
    Last edited: Dec 5, 2020
  17. Omar Negron

    Omar Negron Top Contributor VIP

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    Agreed!

    Thanks for sharing Brad!
     
  18. Mytz.com

    Mytz.com Top 4L [email protected] ieie.com CuTu.com NeSu.com QAMI.com PRO VIP Gold Account

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    Did he take the domain name at last?
     
  19. Omar Negron

    Omar Negron Top Contributor VIP

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    Who?
     
  20. Maximinus

    Maximinus Established Member

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    I am very surprised, because I own such a name.
    Can you @pablohc86 estimate the chances of winning such a case, please!?
    Do you know where I can find more info on such cases?
     
    Last edited: Dec 14, 2020
  21. pablohc86

    pablohc86 Top Contributor VIP ★★★★★★★★★★

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    as every case is different, no one can give a better reply than a lawyer expert in these matters.
    You should try with John Berryhill https://johnberryhill.com/ or also here: https://www.esqwire.com/domain-name-disputes/
    there are others btw...
     

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