Name with multiple trademark holders

[ezinaz]

Domains with multiple trademark holders

If there are multiple trademark holders for the same phrase, is it safe to own this domain? For example, if there are multiple trademarks for the name "GreenTree", how would ICANN decide who has the proper rights to that trademark name?
Is it safe to own a domain that is in this situation if the intent is to someday auction the domain and not develop.

TIA...EZINAZ

 

[scandiman]

I've wondered the same thing. Seems like the TM's would create a stalemate of sorts but I am no expert. Might get more input on this if you post this in the general forum or the legal area since this issue touches all domains, not just .mobi.

 

[Mark]

Threads Merged - Spammer removed

Thx -

 

[DNQuest.com]

Multiple TM holders mean more people can come after you. As an example. Apple is TM in the music and computer industry. You own a domain with the word apple and cross either line, they can come after you. So with multiple TM holders, that means you need to do your due diligence in making sure you do not use the TM in bad faith.

 

[labrocca]

As for WHO the name goes to...most likely a smart company would ask that the name be deleted from the registry and locked. AppleMicrosoft.com (unregistered btw) would be an example name where Microsoft might go after it...then ask the registry to lock it.

 

[scandiman]

Multiple TM holders mean more people can come after you. As an example. Apple is TM in the music and computer industry. You own a domain with the word apple and cross either line, they can come after you. So with multiple TM holders, that means you need to do your due diligence in making sure you do not use the TM in bad faith.

But using the OP's example, if multiple companies have TM's for GreenTree, can the name GreenTree.com be safely auctioned to the highest bidder?

 

[GiddyUp]

ive wondered the same thing - why cant the name be auctioned to the highest bidder?

im in a similar situation

 

[Dave_Z]

But using the OP's example, if multiple companies have TM's for GreenTree, can the name GreenTree.com be safely auctioned to the highest bidder?

That's an irrelevant question. But I'll give one answer and you'll see why.

Let's say delta.com is in auction. An airlines company, a faucets manufacturer
and a hotel bid for it, the airlines eventually wins, and they promptly use the
domain name to advertise their services.

Can the other 2 sue the airlines company for the domain name, or all three will
sue the auction company for it? Sure.

But will either one win? Highly unlikely when the domain name isn't seen to be
infringing their respective trademark rights, if any.

However, does it make sense for any of the three to sue the auction company
for the domain name if it turns out to be cheaper to bid for it? Maybe, maybe
not, although it doesn't prevent one from being possibly frivolous about it.

To answer one of ezinaz's questions, ICANN does not decide who has "proper
rights" to a domain name, although I'd imagine that's how some like to see it.
What their administrative procedure (UDRP) does is either transfer, cancel, or
deny based on any and all facts presented.

 

[amosba]

The way I see it, if there are multiple TM holders for GreenTree and you register GreenTree.com, any one of them can hit you with an UDRP. If you don't have a legitimate claim to GreenTree (ie, your own TM on the term) then whichever TM holder files against you may win.

More TM holders = more risk, not less.

The interesting situation would be if all the TM holders file UDRPs at the same time - what would happen then? Is it first come, first served, or would the complaints be combined somehow?

 

[Skinny]

Multiple TM holders mean more people can come after you.

More TM holders = more risk, not less.

My feelings exactly.

Skinny

 

[ezinaz]

How about...for example...the following situation. Let's say the name is asu.mobi. There are multiple schools holding a trademark of ASU. (Arizona State University, Alcorn State University, etc.)

Same situation applies? (probably...I guess)

 

[Ronald Regging]

Quite simply, it doesn't matter if it's 1 or 20 companies with TM to the name, as long as you have no legitimate usage for it, you run the risk of having it taken away. When you start contacting TM holders in order to sell the domain to them, you're pretty much establishing bad faith.

The best way to handle questionable TM situations is merely to develop the domain in a completely unrelated manner to any of them. Also, wait for them to come to you with offers, don't go to them. It's not like they aren't aware of the existence of the domain. If they want it, they'll make an offer. If not, then they wont.

Personally if it were a LLL.mobi I wouldn't be too concerned about putting it up for auction, but I would definitely advise you not to inform the TM holders that it is for sale.

 

[DNQuest.com]

All that matters is who actually files. We are getting carried away here. UDRPs do not come after domain names, and they are not the TM police. It is the alleged TM holders who file a UDRP and all that matters are the facts that are presented during the UDRP.

 

[fonzie_007]

I'd argue more TM holds could actually help you depending on the situation. Take a LLL like ABC versus a LLL like QXZ. I understand LLL usually are assumed to be generic, but for the sake of this arguments do not. Assume both domains are being attacked and the registrants are attempting to respond the term is generic.

Let's say there are 20 TMs on the term ABC but only one on QXZ. Which mark is more distinctive and which one is more generic? In this example, I believe that while the domain name holder of ABC would probably have to fend off more arbitrations/lawsuits, the registrant would have a better argument than the registrant of QXZ for saying the term is generic.