question Owned a premium 4 letter domain for years. Someone recently trademarked it

[poker_bears]

It's a dictionary word in a foreign language, owned it for years. Their company is very young, formed long after I purchased the domain. They got it removed from Sedo I believe by stating they own the trademark, got upset when I wouldn't gift it to them for a few hundred bucks.

Surely they can't steal a domain I've held for 10+ years just because they recently started a company and trademarked it?

 

[loredan]

Naah don't worry about that, just make sure you don't have any sort of ads on the landing page.

 

[TauseefKhan]

@loredan said it well.

 

[Jeffrey]

Don't put ads or do not redirect it on a parking page with sponsored links.

 

[DuDD]

there is no need to worry

 

[poker_bears]

Appreciate the help guys Thank you!

 

[twiki]

No worries.

If an UDRP would be filed, it would fail and fall under the reverse domain hijacking situation.

The base of such a claim is that you infringe on their trademark by registering the domain, but you cannot infringe a trademark with an action done in the past, before the tm even exists.

You have, however, to make sure your site content does not match their business niche or otherwise there is infringement via content type.

Edit: Should an UDRP be filed (unlikely; dumb on their part) make sure you get good legal assistance though. Always pays off to err on the safe side.

 

[Revisiting]

Agree with all the above - Don't worry. These situations happen more and more these days. I doubt many new companies could register a new trademark today without there being an existing registered domain to match. Our problem is there is about as much naivety around business and trademark rights ownership as there is domainers who haven't studied the same.

at one time i actually enjoyed engaging with TM holders who came on strong about their rights and my wrongs on domain ownership. Trouble is it usually takes a hell of a lot of time until they get the correct (and quite logical picture) about domains. My advice is always stay polite and let them throw the first stones - keep a copy of all correspondence and enjoy educating them

PS. And they'll still want you to Burn in hell for being such a Smart Ass

 

[Ariff BD]

In such scenario, can he put a bin or make offer in a dan lander?

 

[Revisiting]

In such scenario, can he put a bin or make offer in a Dan lander?

Yes, With a few precautions. Obviously Dan listings have to be of the generic plain listing. You could go to the trouble of making sure any adverts are a world away from the new trademark holders classes But I wouldn't risk it. I think all my domains in .com now have a Trademark or two all subsequently registered. well after my domain registrations - I stick with fix priced plain landers and with what I consider fair market asking prices. I don't think it wise to be seen to overly exploiting.

Purely my take on things - and no issues to date

 

[poker_bears]

Yes, With a few precautions. Obviously Dan listings have to be of the generic plain listing. You could go to the trouble of making sure any adverts are a world away from the new trademark holders classes But I wouldn't risk it. I think all my domains in .com now have a Trademark or two all subsequently registered. well after my domain registrations - I stick with fix priced plain landers and with what I consider fair market asking prices. I don't think it wise to be seen to overly exploiting.

Purely my take on things - and no issues to date

Really appreciate the info. I have it temporarily parked at Godaddy where it's registered. They have generic links/ads on the landing page but they don't benefit me. Surely that's ok until I create my own site?

I had a lawyer acquaintance tell me buying domains to hold as an investment is illegal.. That can't possibly be true? If that were true wouldn't it put Godaddy Auctions, Sedo, BB out of business overnight? It's only if you buy a domain AFTER there's a trademark registered right?

Thanks!

 

[loredan]

Really appreciate the info. I have it temporarily parked at Godaddy where it's registered. They have generic links/ads on the landing page but they don't benefit me. Surely that's ok until I create my own site?

No that's not ok, which part of "don't put any ads on it" you don't get? If it happens that one of the ads is related and/or placed by the company that wants your domain, you're screwed. Better keep a blank page with nothing on it or a "coming soon" placeholder.

I had a lawyer acquaintance tell me buying domains to hold as an investment is illegal.. That can't possibly be true? If that were true wouldn't it put Godaddy Auctions, Sedo, BB out of business overnight? It's only if you buy a domain AFTER there's a trademark registered right?

Thanks!

Your lawyer is stupid. There are proper lawyers on this forum that are also domain investors.

Yes, if you buy a domain AFTER there's a trademark registered is wrong and it is called cybersquatting.

Hope this helps

 

[poker_bears]

Thank you. Just surprised I can't park it with the same company I own it at. It just says "parked free at Godaddy," There's a related "searches" link column at the base.

I'll move it to a blank "coming soon page." Thanks again, in 10+ years have never encountered a situation like this.

 

[AlanBuilt]

If it is a dictionary word it wouldn't matter if they had it trademarked or not, just don't buy apple.com and start selling iphones.

 

[topdom]

Sedo sucks when removing or not accepting generic domains because of unexplainable conflict of interest. I really don't understand what they are afraid of.

No worries by default. But the world is partly run by trrrsts. Commonsense doesn't always apply. UDRP sometimes prefers to take part in a crime instead of preventing it.
UDRP is a department of UN, and another department WHO is responsible for the corona mess, as an agent of BigPharma. WHO created corona (no question mark). But of course most people working there can be totally innocent.

 

[Tryjake]

Really appreciate the info. I have it temporarily parked at Godaddy where it's registered. They have generic links/ads on the landing page but they don't benefit me. Surely that's ok until I create my own site?

I had a lawyer acquaintance tell me buying domains to hold as an investment is illegal.. That can't possibly be true? If that were true wouldn't it put Godaddy Auctions, Sedo, BB out of business overnight? It's only if you buy a domain AFTER there's a trademark registered right?

Thanks!

I don’t know but I look forward to learning those answers hopefully with helping smarter folks like y’all. I will look it up though somehow. If it’s even a precedent or U.S.C. Code revision that addresses the exact issue.

I think my TOS with the aftermarket company said I agree to not even click on the landers and then I’m pretty sure after glancing through it that it said it was because they are parked....?

Not all of us are (well I should say “I” am not) in a position to try and park as I learn. Then formulate a plan accordingly based on global economic issues during an unprecedented pandemic?

What’s cash parking for if that’s the case?

im not arguing with you I’m just curious about some similar possible issues for anyone.

 

[Tryjake]

Sedo sucks when removing or not accepting generic domains because of unexplainable conflict of interest. I really don't understand what they are afraid of.

No worries by default. But the world is partly run by trrrsts. Commonsense doesn't always apply. UDRP sometimes prefers to take part in a crime instead of preventing it.
UDRP is a department of UN, and another department WHO is responsible for the corona mess, as an agent of BigPharma. WHO created corona (no question mark). But of course most people working there can be totally innocent.

That’s over my pay scale.

With people passing away from this terrible thing the world is going through together obviously anything relating to domains or anything other than human life should be tabled. Goodness that an interesting point but let’s hope the best from leaders in all places. I know where I come from my elected officials had better not worry about the price of milk when the grocery stores may be shutting down. (For example).

 

[Fayaz Ahmed]

AFAIK, trademark doesn't constitute any and all usage.

Even if a company files a trademark on a made up word, whether or not your ownership of that word .com & use of such domain name infringes the trademark, depends on which category of services and goods their trademark is live on.

Simply stay away from that category (or categories) of services and goods in all possible ways (content, ad. etc.) and you'll be fine.

 

[twiki]

AFAIK, trademark doesn't constitute any and all usage.

Even if a company files a trademark on a made up word, whether or not your ownership of that word .com & use of such domain name infringes the trademark, depends on which category of services and goods their trademark is live on.

Simply stay away from that category (or categories) of services and goods in all possible ways (content, ad. etc.) and you'll be fine.

If the domain does not have an established site on a different niche/NICE class, and domain has been acquired after the trademark has been registered, the TM owner has all chances to UDRP successfully.

Domainers are 100% exposed to this because we only put domains up for sale, mostly, and this is also proof that the domain is not properly used and UDRP risk is high.

Most important: This sort of thing needs advice from a lawyer, not a random user on NP.

 

[Tryjake]

I concur. It is really tough because I have loved many things I register but don’t have a law degree nor do I have a paycheck to research it. I just like the business.

 

[King]

They can't do anything besides annoy you, a TM alone doesn't mean they are entitled to the name.