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NP Newsletter #1 11/2011 "the Ten Commandments of Domaining, part 1"

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There is an allure to the concept of easy money. I’ve heard of a guy who registered a domain for around $5 and sold it days later for around $5,000. Was it really $5,000? I can’t recall in exact but even if it was only a $100 sale, that ROI is staggering. That’s the American dream, it seems: Making the big, easy money with little to no effort. Some people orchestrate bank robberies. The less dramatic injure themselves and point their crooked fingers toward the boss or, if possible, the Government itself, hoping for a big paycheck to compensate for their “anguish and suffering.” Fortunately, there are people who want to earn their keep, individuals who wanna play it perfectly legit & reap rewards for it.

In many cases, the line between legit and immoral dissipates. Not blurs. It pretty much dries up and ceases to exist. Kinda like the point of Jersey Shore or perhaps House of Pain’s rap career.

Not every domain investor is immoral by default. Many simply do not know the ropes. Domaining is a game and like all games, it has its own set of rules. I’ve been in this industry for over seven years so yes, I’ve seen the good. The bad. The incredible. The impossible. Even the most inane. And yes, I’ve seen this from my own eyes and unfortunately, from experience, being a clueless noob, once upon a time. I won’t lie to you. It’s easy to see big paychecks coming from domaining. Just looking at the figures can encompass euphoria, fantasies, and the occasional heart attack. Taking a look through recent domain sales, FreeCharge.com sold for $55,000. Picked.com netted $35,000. If you do a lot of looking, you’d see category-killers fetching over a million dollars. Yes, ladies and gentlemen--seven figures.

Maybe I was off by a few with the domain I was referring to above, perhaps by $1,000 or so. But wouldn’t you just love to make that kind of cash while sitting on yer bum, doing little to nothing? Sure you would! Domaining looks like a no-brainer to most who are looking for extra cash. Buying domains is easy. Selling them for profit, on the other hand, is a different story, especially if you’re “sitting on yer bum, doing little to nothing.” You need to know what to buy, what to sell, and how to safely secure a transaction. That elusive $35,000 sale won’t just materialize. You need the tools and resources to figure out what to do.

So here you are, reading this article. I’m going to assume that otherwise you’re a novice, wanting to learn the ropes of pulling a profit from this wonderful game of “domaining” or you’re a seasoned pro who merely wants to kill time since the computers in your office have Net Nanny set up. Either way, I’m going to try my best to educate those in need of a helping-hand with the basics. The don’t aspects are far more important than the do’s in that committing any of the former can cripple you, your bank account--even your marriage and children. “Impossible,” you say? You’ll be surprised... in an unpleasant way. Just as one good virtue can make your life better, one sin can bring your world crumbling down, only to burn in red ashes.

That said, I’ve complied a list of elements that every domainer--novice and pro alike--needs to heed if he/she wants anything reminiscent of a fighting chance in this game. These were written as Commandments since they should be studied and studied well. None of these were “ratified” by the community; they are interpretations of what I’ve seen throughout my career put into a readable, cohesive form. Take this as Gospel or whatever you will but if you’re a noob, memorize these Commandments thoroughly. One misstep and you might descend into the Domain Hell that had befallen many a novice.

So allow me, your pretentious Archangel, to cleanse your mind of the needless detritus and fill you instead with knowledge. I hear your questions. “So, how much can I realistically make off a trademarked domain?” “Why can’t I find a buyer for my PR7 domain?” “How come my domain appraisal says my domain’s worth $25,000 but I can’t sell it for even half of that?” “What is the best cure for a nasty rectal itch?” Sit down, my child, and grab some popcorn. Use the restroom if you need, too, ‘cause we’re gonna be here awhile.

1.) Thou shalt not purchase or register trademarked domains

I love pizza. Who doesn’t? It’s like heaven in your mouth. And when I’m lazy, I find solace in that I can have a meal made in thirty minutes or less with just a phone call. And they’ll even bring it to my door. Isn’t that nice? One of my poisons is those lovely round pies of goodness from Pizza Hut. That sauce and mouth-watering cheese is an easy candidate for a fan site. And there probably are Pizza Hut fan sites out there: as of this typing, there are a whopping forty-nine extensions taken for the term ‘pizzahut.’ Only forty-nine, I say? That means there are still numerous pizzahut.extension domains out there. The logical consensus to a noob is, “Grab them before someone else does!” The sadder rationing of a noob is, in an idiotic zeal, “Register these things now to resell to the company for big bucks!”

Wait. Stop. No, just stop! Put that credit card away and read. Trust me: I’m saving you a lot more than you’ll ever make with a trademarked domain. Even if you want to register one for your own use, there are possible repercussions. I oughtta simple say “Don’t obtain trademarked domains” but let me elaborate.

The idea of registering a trademarked domain to resell is not only foolish but it’s also a sign of amateurism. Pros know better. Think about it: If Pizza Hut wanted, let’s say, pizzahut.cn, what makes you seriously believe that they wouldn’t have registered it by hand, long ago? “Pizza Hut” is a registered trademark, thus if they seriously wanted a pre-existing variant domain, they’d more than likely file a cease-and-desist order against the owner and then sue him and all his loved ones out of existence. Awhile back, some noob listed a trademarked domain at BIDO.com; the entire thing was unsettling. The domain was WellsFargo.cn. One epic piece of the seller’s description--a copy/paste from the original--stated this: “You can sell this domain to WellsFargo for a big sum of money.” No ya can’t, noob. As a member of NamePros said at the time, he might have meant to say, "You can try and sell this domain to WellsFargo for a big legal roundhouse kick to the pants, and a never-forgotten lesson..." but who knows. Suffice to say, this monstrosity didn’t sell.

There is the other side: Registering a trademarked domain for personal use. This article deals with domaining, not the legalities of using a domain. I warn you though that the pitfalls of this practice are steep. Making money with a trademarked domain is even worse. If you insist on developing a site on a trademarked domain, beware that even if your intentions are good, your adulation can backfire on you. It’d be for the best to steer very far from trademarked domains. How much could you resell one for? Answer: Zero, unless you find a novice out there who has the pipedream of making million from it. Be educated and smart: Avoid trademarked domains like movie-goers shunned “Gigli.” If you wanna blow over $1,000 for pizzahut.ki, be my guest but if tall men in business suits come knocking on your door, don’t expect them to be delivering food.


And that’s it for now. You have enough to mull over for the time being. Put that on a brain-cell: Rid of any trademarked domains you have. Got it? Good. We’ll continue this next month, where other hell-worthy trespasses will be explored. Be safe in your decisions, my compatriots, and surely: be smart. Just as my avatar shows, I’ve got my eye on you.
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
NamePros members, what are your thoughts about Randy's Commandment #1:"Thou shalt not purchase or register trademarked domains"? Do you agree, disagree or don't care?
 
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I agree that TM domain buying is NOT the way to get started in domaining and has multiple potential legal issues down the road owning one. With that said, I agree with that commandment as a warning to new or even old domainers that buy such domains.

Eric Lyon
 
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I won't lie. When I was starting out, I found .orgs of TM'ed .coms available & registered them. I couldn't sell them for a profit. Hell, I think I actually let a few expire and thus not only failed to profit but actually LOST money because of it. I learned from my mistake and moved on.
 
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Three exceptions

I would make three exceptions to the rule of not registering trademarked domains...

1. Sucks Sites / Consumer Gripe Sites - It's appropriate for sites like PayPalSucks.com to use a trademark in their domain.

2. Fan Sites - This is a little more controversial but I believe fan sites should be able to use trademarks in their domains and have seen this successfully defended at UDRP domain disputes.

3. Affiliate Sites Affiliates may find it useful to have a domain containing a trademark if the affiliate program allows is. (I am noticing more affiliate programs not allowing it, so check first).

In all cases, it's important that you're making a legitimate website on the domain and not just parking it or misusing it to confuse visitors.

If your sole purpose of registering a domain is for resale, then Randy's commandment has no exceptions. Stay away from other people's trademarks!

RJ
 
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If your sole purpose of registering a domain is for resale

Or to intentionally make money off of its trademark namesake without its mark holder's permission, for that matter.
 
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At one time I owned 20,000 one worded names I sucked up from the Department of Defense in 1989. Even though they were all FREE, I knew in my heart that it would get me into trouble registering "microsoft.com".

Look at this Jack A**, he registered the name BEFORE the company formed that has the same name. He got greedy and now he not only lost the domain name, but has a judgement against him, and is filing bankruptcy.

http://www.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-56110.pdf

---------- Post added at 04:54 PM ---------- Previous post was at 04:52 PM ----------

NamePros members, what are your thoughts about Randy's Commandment #1:"Thou shalt not purchase or register trademarked domains"? Do you agree, disagree or don't care?

Wow, I am amazed at his wisdom.
 
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With a small address to these:

These consumer-gripe sites are okay but they'd be kinda a waste of money if you intend to profit from them. Fan sides are the same. But if this is true, then... why aren't more TM'ed sites taken offline? Answer: The vast majority make little to no money. It's not worth the legal hassles, money-wise, for TM owners to interfere. But that doesn't mean they won't ;)

And with #3: If TM owners see ya making a lotta cash with their TM--even trough affiliates--you'll be in trouble.

I would make three exceptions to the rule of not registering trademarked domains...

1. Sucks Sites / Consumer Gripe Sites - It's appropriate for sites like PayPalSucks.com to use a trademark in their domain.

2. Fan Sites - This is a little more controversial but I believe fan sites should be able to use trademarks in their domains and have seen this successfully defended at UDRP domain disputes.

3. Affiliate Sites Affiliates may find it useful to have a domain containing a trademark if the affiliate program allows is. (I am noticing more affiliate programs not allowing it, so check first).

In all cases, it's important that you're making a legitimate website on the domain and not just parking it or misusing it to confuse visitors.

If your sole purpose of registering a domain is for resale, then Randy's commandment has no exceptions. Stay away from other people's trademarks!

RJ


---------- Post added at 08:21 PM ---------- Previous post was at 08:19 PM ----------

That's one. I have 9 more to go :D

Wow, I am amazed at his wisdom.
 
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I have consulted with a trademark lawyer in the past. My understanding is that if you register a domain name before a it was trademarked there is no problem with violating that trademark regardless how you you use it.

My question is what if you want to sell the domain, would the sale constitute a violation of the trade mark. I imagine it would if the new owner used it in the same manner that it was trademarked under. But if the new owner used it in a different context, I don't think the trademark owner could make a claim. Any opinions on this circumstance.
 
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A lot of domainers do not have any vested interest in actually using the domains they buy. They are just keeping the domains in their possession waiting for a buyer. And until that time comes, a lot (not all) of these domainers are not really generating any kind of sensible revenue from the domains they own. Which means the prospect of spending money for lawyer fees just to defend yourself from a trademark owner lawsuit... could be a money-losing situation. Which is why, practically speaking, it is best to avoid trademark domains.

I think i've read incidents where a trademark owner could not legally get the domain name. In such case, the domainer tries the tactic of "chilling-out" for as long as possible, waiting for the trademark owner to give up and pay him the money he wants. Many domainers try this strategy, since the worst thing that could happen to you is just lose the domain name anyway. It's an all-or-nothing bet.

I think you are more likely going to be slapped with monetary penalties for copyright infringement of "content", rather than getting caught owning a trademark domain that is pointing to nothing but blank space.

Another thing, just because you registered a domain name BEFORE that "brand name" was trademarked, doesn't necessarily make you safe.

I've read WIPO judges try to examine your "motive" for regging the domain, whether you were "aware" of this brand launching and you tried to preempt the brand owner because he was widely popular and your motive was obviously to disrupt his business or obtain financial gain out of his popularity. You could lose your domain just the same, based on "bad faith" usage.

Another valid issue with "trademark" domains, is jurisdiction.

Perhaps a company known only in Korea is using the "brand" for its korean audience. It can be quite possible that the Korean company cannot claim a domain name of the same brand owned by someone else in the US, if the Korean company failed to reg the domain as its own. In the end, the Korean company might be forced to pay the domainer to get the domain. So there is still possible scenarios where domainers can actually profit from the "risky business" of prowling trademark domains.

So in summary, unless you know what you are doing, it is probably best for a domainer whose primary interest is to profit as quick as possible, to simply go the path of "least trouble" and avoid "potential" trademark issues when regging domain names. If you lack the capacity to defend yourself, better to not get involve with a fight in the first place.
 
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The owner of twilight.com was sued for using the domain as an Amazon affiliate site. Read here:

http://blogs.findlaw.com/celebrity_...tcom-owner-sued-by-twilight-movie-studio.html

Funny sice the domain was regged in 1994. It doesn't matter WHEN you regged a domain. ALL that matters is how it's USED.

I have consulted with a trademark lawyer in the past. My understanding is that if you register a domain name before a it was trademarked there is no problem with violating that trademark regardless how you you use it.

My question is what if you want to sell the domain, would the sale constitute a violation of the trade mark. I imagine it would if the new owner used it in the same manner that it was trademarked under. But if the new owner used it in a different context, I don't think the trademark owner could make a claim. Any opinions on this circumstance.
 
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Recently one of my trademark domain expired.
Talking to the owner he refuses to sell us saying that he registered it for his own use.

How to proceed to get the name?
 
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Recently one of my trademark domain expired.
Talking to the owner he refuses to sell us saying that he registered it for his own use.

How to proceed to get the name?

Your first task will be to determine if you have a legitimate right to the domain.

OOPs sorry, should have commented on the thread first. Good idea Archangel, keep it up. Shame we can't have a little questionaire about ethics as a pre-requisite to joining NP's
 
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Good thread Randy.
I wanted to comment on one of your first statements:
There is an allure to the concept of easy money. I’ve heard of a guy who registered a domain for around $5 and sold it days later for around $5,000.
I recently had an 'almost' of one of these. Regged RentEstimates dot com back in the spring. Recently had a $4500 offer on Sedo. Turned out to be a non-payer, but that would have been a great roi on my 9 dollar investment in only a few months. The (non) buyer turned out to be a millionaire in the States, who owns a large multi-state rentals company. Guess he changed his mind.
But goes to show that this kind of dream (reg fee name getting a x,xxx offer/sale a short time later) can still happen. Almost, for me :)

Re: TM names - I agree with RJ above about careful use of them if your intentions are non-monetary. Personally I've regged maybe 5 tm names back in my noob days but currently have none. I had SecretPink dot com for a while, but when Victoria's Secret came out with their 'Victoria's Secret Pink' trademarked line, even that was a little too close for comfort so I had my registrar drop the name from my account.
*Interestingly, the registrar chose to keep the name for themselves and still have it...
 
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