Obvious TM issue...I think.

[FreshAvails.com]

If you have a name like "LevisBelts.com" it seems obvious that there is a TM issue. But tons of retailers have the ability to sell and promote Levis Belts.

What type of risk am I exposed to if I had that name and promoted Levis Belt retailers? I think I am still exposed.

This would be a minor revenue stream via parking or some other simple pass through site. My question really relates to developing a strategy for operating these kinds of sites. I also know that every brand owner is different in terms of how voraciously they protect their name. Is there a catagory that is more "flexible/lenient" than others?

Probably not a smart thing but would love to hear opinions to the level of risk, not so much if there is TM infringment(Think that is obvious).

 

[Dave_Z]

What type of risk am I exposed to if I had that name and promoted Levis Belt retailers?

Without permission, your risks are considerable.

 

[Timewarp]

Level of risk could also be measured by how aggressive the company has been in the past in protecting their TM. For example Ebay has been known to take people to court just for using "bay" in their name.

 

[DNQuest.com]

This would be a minor revenue stream via parking or some other simple pass through site.

John Berryhill has commented many times in the past. Though I do have some disagreement with what was presented.

If you are a retailer who actually sells Levi Belts, this would descriptive of what you do. So, if you are asked "why did you registere Levi Belts?", you would answer, "because I sell Levi Belts"

Now, in my cynical view, you do not currently sell Levi belts, thus, you are looking to profit from a domain. Parking is and isn't a bona-fide offering of services, it would depend on what panelist you get. Right now, it would not look good for you.

 

[labrocca]

Whether John Berryhill is right or not about the law isn't all that important. If the decision goes to WIPO the safe bet is that you will lose the domain.

If you have a name like "LevisBelts.com" it seems obvious that there is a TM issue. But tons of retailers have the ability to sell and promote Levis Belts.

But you are not one of those retailers.

It's all very touchy but like I said...risk wise...you might lose the domain...so what measure of risk is that to you?

 

[FreshAvails.com]

It's all very touchy but like I said...risk wise...you might lose the domain...so what measure of risk is that to you?

Thanks you all for your comments and advice. Risk of losing the domain is no big deal. I would only aquire the names if they were inexpensive and "Disposable" if you will. It would be more of the legal action for punitive damages that scares me, rather than a WIPO decsion to lose the name. My strategy would be to have a collection of these type of sites. (i.e. LevisBelts.com, SwinglineStaplers.com, BroyhillTables.com, etc..)

I am wondering if I do an affiliate program through eBay retailers (or other authorized retailers) and include those links on a part of the front page and my own google ad and content on the other part, whether that would qualify me as a store. My thought is that if the name tests well in terms of traffic/inital parking revenue, I could "Upgrade" my status as a pseudo-retailer for more protection. Thoughts?

Reg added to everyone I can give to. Thanks.

 

[Timewarp]

I am wondering if I do an affiliate program through eBay retailers (or other authorized retailers) and include those links on a part of the front page and my own google ad and content on the other part, whether that would qualify me as a store. My thought is that if the name tests well in terms of traffic/inital parking revenue, I could "Upgrade" my status as a pseudo-retailer for more protection. Thoughts?

It would depend on the TOS of the affiliate program you signed up under. Many(most?) specifically prohibit the use of their TM in URLs or keyword bids when promoting their products.

Basically what you are thinking of doing here is illegal and these little tricks may help you fly under the radar but none of them provide a legal way out if a company decides to take you to court.

If you want to be safe don't buy TM names, if want to do it anyways I doubt if there is a legal loophole and you would be betting on not getting caught rather then any viable defense.

Not passing judgement here, just dont think there is a way around the very strong TM laws already established on and off the internet.

 

[FreshAvails.com]

It would depend on the TOS of the affiliate program you signed up under. Many(most?) specifically prohibit the use of their TM in URLs or keyword bids when promoting their products.

Basically what you are thinking of doing here is illegal....

Thanks for the feedback. The affiliate store status would be with the retailer and not the product/brand. If that retailer is an authorized reseller of LevisBelts, I too would be a "defacto" (Warning, I am using legal terms without proper training) authorized retailer with legitimate reasons for promoting the Levis Belts and a legitimate use for the domain.

I will weigh all your comments and factor them into how I proceed. I have no interest in hanging myself with a "defacto" levis belt so will likely be more conservative than less. Thank you again.

 

[DNQuest.com]

(will also use legal terms without proper training)... Illegal infringement of a trademark..AKA, Cybersquatting. That is the tactics they use and that is why the ACPA and the proposed Snowe bill are around. It is also why domainers, in my opinion, are at a disadvantage at the start with any challenge, and that is why overreaching is allowed.

With affiliates and promotions, you need written consent to use TMed domain which you are describing. Most affiliates TOS do state you may not use thier TMs. As far as punishment, you could be subject to ACPA which is where dmaages may be awarded. IF you think losing in WIPO is no big deal, jsut wait until you lose a couple cases and then you actually have a defendable domain. IT will be pointed out how much of a cybersquatter you are by losing previous cases, so you must still be squatting.

So what you are describing, is illegal infringment.

 

[labrocca]

Basically what you are thinking of doing here is illegal and these little tricks may help you fly under the radar but none of them provide a legal way out if a company decides to take you to court.

I don't agree. Using something like an Ebay affiliate site would be adding value to the brand. How can any brand argue damages or dilution? That's also important when dealing with TM violation.

LevisBelts.com developed properly and with intent to help sell the brand would imho be fair use. This is just my opinion though and someone with a law degree should probably chime in at this point.

Personally I would go with the psuedo-retailer idea over parking anyday. Parking adds no value to the brand.

 

[jberryhill]

John Berryhill has commented many times in the past. Though I do have some disagreement with what was presented.

What I had presented in the past is the law of the 7th Circuit Court of Appeals, which covers a number of midwestern states. And there are similar cases in the other circuits on the issue of nominative referent use.

Where there is a distributor, dealer or affiliate contract, then that contract is going to control.

However, this is a highly panelist-dependent issue under the UDRP.

So, no commentary, just UDRP decisions:

http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0727.html

Respondent’s contention is that he or his employer intended to associate the Domain Names with a web site used in connection with the legitimate distribution of 3M products. Assuming that to be true, it is possible that Respondent may well have a "nominative fair use" defense to Complainant’s claims. Several panels have held that the truthful, nominative use of a trademark in connection with the sale of the goods or services that are properly identified by that trademark does not constitute bad faith under the Policy. See Adaptive Molecular Technologies, Inc. v. Woodward, D2000-0006 (WIPO February 28, 2000); Giddings & Lewis LLC v. McKean, D2000-1150 (WIPO March 14, 2001); Nicholas v. Magidson Fine Art, Inc., D2000-0673 (WIPO September 27, 2000); Kendall v. Meyer, D2000-0868 (WIPO October 26, 2000); The Kittinger Company, Inc. v. Kittinger Collector, AF-0107a,b (eRes May 8, 2000). Nominative fair use is a well-established doctrine under U.S. trademark law as well. See, e.g., The New Kids On The Block v. News America Publishing Inc., 971 F.2d 302 (9th Cir. 1991).

http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0903.html

In this case, Respondent’s conduct meets all these factors. Respondent is an authorized seller and repair center, is using the okidataparts.com site to promote only OKIDATA goods and services, and prominently discloses that it is merely a repair center, not Oki Data itself. It has not registered numerous okidata-related domain names, and has not improperly communicated with Oki Data customers.

Complainant has not presented any other evidence that undermines the bona fides of Respondent’s use. Accordingly, the Panel finds that the Respondent, as an authorized sales and repair dealer for Complainant’s goods, has a legitimate interest (under the Policy) in using the Domain Name to reflect and promote that fact. See, e.g., Columbia ParCar Corp. v. S. Burstas GmbH, Case No. D2001-0779 (WIPO Aug. 23, 2001); ABIT Computer Corp. v. Motherboard Superstore, Inc., Case No. D2000-0399 (WIPO Aug. 8, 2000); Weber-Stephen Products co. v. Armitage Hardware, Case No. D2000-0187 (WIPO May 11, 2000). See also K&N Engineering, Inc. v. Kinnor Services, Case No. D2000-1007 (WIPO Jan. 19, 2001) (finding that the use of a manufacturer’s mark in a Domain Name merely "provide, via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the Complainant").


http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0006.html

Further, Respondent’s use of the domain militec.com in connection with a web site devoted to sales of genuine MILITEC-1 product may constitute a fair use under principles of trademark law. I cannot, therefore, conclude that Complainant has met its burden of establishing bad faith registration and use under Paragraph 4(b)(iv) of the Policy.

http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0187.html

This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant’s goods or services. It is apparent from the Respondent’s web page that Respondent is selling Complainant’s goods under Complainant’s registered trademark. Although it appears that Respondent has also used its web page to sell (directly or indirectly) products other than Complainant’s, these instances appear to be minor and Complainant has not controverted Respondent’s alleged removal of these items.

http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0819.html

However, the Panel reaches a different conclusion with respect to the domain name canoncopymachines.com. With respect to this domain name, the evidence indicates that the domain name is in use, insofar as it accesses Respondent's web site, and that such use commenced prior to notice of this dispute in connection with the bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. Further, upon review of Exhibit E to the Complaint, the Panel concludes that Respondent's use of the "Canon" mark falls within paragraph 4(c)(iii) of the Policy. Respondent has the right, at least under U.S. trademark law, to refer to the marks of others as a means to identify the types of products it services or sells.

http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0447.html

Complainant has also not presented evidence that Respondent has registered numerous VOLVO-related domain names, and has improperly communicated with VOLVO customers. The fact that Respondent has registered other domain names incorporating famous car brands (<audi-auto-body-parts-online.com>, <nissan-auto-body-parts-online.com>, <bmw-auto-body-parts-online.com> etc. ) does not make the use of the disputed domain name unfair or illegitimate. Respondent uses the domain names which incorporate other car brands for separate websites that only offer car parts which are related to the respective domain names (i.e. Audi car parts, Nissan car parts, BMW car parts). The use of these domain names cannot be considered as warehousing or as offering of other brands or products under the disputed domain name. Therefore, the present case does differ from those where a respondent is predominantly offering under a certain domain name goods and services non-related to that domain name (cf. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 - <discount-marlboro-cigarettes.com>; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 – <mercedesshop.com>; ISL Worldwide and FIFA .v. Western States Ticket Service, WIPO Case No. D2001-0070 - <fifatickets.com>; Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 - <nikondealer.com>).

 

[labrocca]

That just put a smile on my face.

Thank you Mr. Berryhill once again for your wisdom.

 

[DNQuest.com]

the Respondent, as an authorized sales and repair dealer for Complainant’s goods, has a legitimate interest (under the Policy) in using the Domain Name to reflect and promote that fact

That is the point there, if the person is an authorized sales or repair, he does have rights since the domain is descriptive of what he provides. That I completely agree with.

But John, there was a previous thread where the domain holder was not an authoized dealer or was in the business of the domain he registered and just merely was parking a domain, but you pointed out decisions where fair use was justified. I was confused at the time because the person was not authorized and was only parking the domain but you were supporting his claims otherwise. If I recall correctly, several of us got confused over that (even Labrocca). That was my only contention. Believe me John, I know you are 649 times smarter than me and I don't even try to argue with you.

For clarification, would that citing hold true for parked domains? (which I guesss is my sticking point.) I would guess it would come under proving bona-fide offering of goods or services?

I do apologize if I sounded like I was second guessing you, I just want to get things right in my head (which is a task at times).

 

[Timewarp]

Very interesting, thanks for that jberryhill

 

[labrocca]

Phil he has a lot of examples there...not all of them require authorized dealers.

This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant’s goods or services.

I guess as John pointed out...it's described as Nominative Reference Use. Learn something new everyday.

 

[DNQuest.com]

Right, that would be when the domain is descriptive of what you do. If I currently am selling Levi Belts, it is descriptive of what I offer. I have no problem with that. If a person does actually have bonafida offerings of goods and services and they registered a domain to reflect that, that is not my issue. My concern is more over parking pages and how they apply to these precedents. Some say parking is a bonafide offereing of goods/ services, some people say it is not.

The theme on all the cited references is there are bona fide offerings by the domain owners before they registered the domains. They were already in business associate with teh prodcts that they registered. In this thread, the domain was not registered to support current usage of the TM.

 

[labrocca]

Count me in the "not a genuine service" for parking category.

 

[Timewarp]

Right, that would be when the domain is descriptive of what you do. If I currently am selling Levi Belts, it is descriptive of what I offer. I have no problem with that. If a person does actually have bonafida offerings of goods and services and they registered a domain to reflect that, that is not my issue. My concern is more over parking pages and how they apply to these precedents. Some say parking is a bonafide offereing of goods/ services, some people say it is not.

The theme on all the cited references is there are bona fide offerings by the domain owners before they registered the domains. They were already in business associate with teh prodcts that they registered. In this thread, the domain was not registered to support current usage of the TM.

Agreed that parking pages might be a hard sell in court, but how about this idea: First before buying the domains start a quickie affiliate shop with a non-TM domain and subscribe to all relevant affiliate programs eg. one with levis belts.

Now that you are estabished as a levis belts vendor go and buy the TM domain and forward it to the affiliate store (basically a custom parking page) or develop it.

 

[FreshAvails.com]

I have truly learned a lot from this thread. Thank you and all those I could, I have added rep.

Because this discussion intrigued me, I ending up securing both OfficialRetailer(s).com to look at a possible directory as well as third level web page possibilities (Sony.OfficialRetailers.com) as an B2B source. I haven't fully thought it out but seems like there is an opportunity there as well. Thank you again.

 

[RicoShay]

I have truly learned a lot from this thread. Thank you and all those I could, I have added rep.

Because this discussion intrigued me, I ending up securing both OfficialRetailer(s).com to look at a possible directory as well as third level web page possibilities (Sony.OfficialRetailers.com) as an B2B source. I haven't fully thought it out but seems like there is an opportunity there as well. Thank you again.

Great idea, you got something good out of this for sure

Excellent thread by the way, I've still lots to learn about this side of domaining.