Selling domains containing 'Google'

[Chris Hydrick]

Domains containing google have sold at venues such as Uniregistry, DropCatch, NameJet, MarkMonitor, GoDaddy, Afternic, Sedo, and NetFleet.

**note sedo hasn't sold a google domain since 2008. maybe they monitor that keyword now?**

https://namebio.com/?s==MjMxYzMyUTM

There is even a live 'google' domain for sale on DropCatch home page...

Is it legally OK for DropCatch to sell GoogleWhack.com? Is it legally OK to bid on GoogleWhack.com?

 

[Josh R]

What's the answer?

 

[jberryhill]

Domains containing google have sold at venues such as Uniregistry, DropCatch, NameJet, MarkMonitor

...

Where does Markmonitor provide a domain sale venue?

Is it legally OK

I suppose that depends on whatever "legally OK" is intended to mean.

If the question is intended to mean "could Google put a hurt on people trading in these domain names if they decided to?" then the answer is certainly yes.

I mean, really, if this is even a question in relation to something like "google.top", then I have to wonder what some folks would consider to be "not OK". But given that Markmonitor is not a domain marketplace in the first place, I question the assertion that this name somehow was "sold" at that "venue".

 

[Chris Hydrick]

Where does Markmonitor provide a domain sale venue?

given that Markmonitor is not a domain marketplace in the first place, I question the assertion that this name somehow was "sold" at that "venue".

Good point.

I only mentioned MarkMonitor because they were listed as the 'venue' for the Google.top sale, and thought I would get scrutinized if I left that 'venue' out.

Though, to your point, maybe I should have checked WHOIS to see who owned these domains before making this post? Google looks like they own owns Google.top. @Michael -- Can you explain why/how MarkMonitor sales such as Google.Top get reported to NB?

I suppose that depends on whatever "legally OK" is intended to mean.

I'm not a lawyer, so excuse my lack of legal jargon. The real question in this post is wondering if there are different sets of rules for a domainer selling a trademarked domain vs a registrar / auction selling a trademark name.

For example, GoogleChromeUpdates.com was won on DropCatch for $1,250. Right now, the domain appears to be some zero-click type parking; I was redirected to edmunds.com when I went to the domain. My concern is if this domain starts redirecting to a malicious site and/or if the domain is used to exploit google chrome customers. If Google was aware of the GoogleChromeUpdates.com auction, are they supposed to win the domain at auction to limit any possible security concerns? If they do win it, does google have a sound legal case to come after DropCatch, or other bidders from the auction who drove the price up? If Google wasn't aware of the auction, but became aware of the sale price, who is more liable if Google wants to make an example of somebody?

Understanding how ridiculous this thread is, I am dumbfounded when I see venue's selling trademarked domains on their front page. It makes me wonder if dropcatching services are exempt from being held responsible for selling such names through possibly their TOS, as bidders have to take responsibility not to bid on TM domains? IDK -- I really should read their TOS to get a better understanding.

 

[jberryhill]

The real question in this post is wondering if there are different sets of rules for a domainer selling a trademarked domain vs a registrar / auction selling a trademark name.

Generally, no. Registrars are immune from ACPA liability for conducting ordinary "registrar services".

Brands have to prioritize what they are going to spend the effort to go after.

Pointing to what other people are doing is generally not a good way to figure out what the law is. I'm pretty sure that half the traffic on the New Jersey State Turnpike is going over the speed limit. If you get pulled over, that fact is not going to help.

It makes me wonder if dropcatching services are exempt from being held responsible for selling such names through possibly their TOS, as bidders have to take responsibility not to bid on TM domains?

As above, you are responsible for what you do. Other people are responsible for what they do. Worrying about what other people do - whether it is law, morality, or anything else - is a good way to avoid self-improvement.

If Google was aware of the GoogleChromeUpdates.com auction, are they supposed to win the domain at auction to limit any possible security concerns? If they do win it, does google have a sound legal case to come after DropCatch, or other bidders from the auction who drove the price up? If Google wasn't aware of the auction, but became aware of the sale price, who is more liable if Google wants to make an example of somebody?

First rule - sue everyone.

The basic US law is 15 USC 1125(d):

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person -

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and


(ii) registers, traffics in, or uses a domain name that -


(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;


(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or


(III) is a trademark, word, or name protected by reason of (special provisions relating to 'Olympic' names).

Notice that "registers", "traffics in" or "uses" are three distinct acts.

So, in 15 USC 1114, we have this:

(iii) A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.

The most interesting case of registrar immunity is Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc. on the question of whether GoDaddy had a "bad faith intent to profit from such registration or maintenance of the domain name" in relation to domain names registered by GoDaddy customers, and parked by GoDaddy's automated system.

Here's a summary of what went on in that one: http://www.dailyreportingsuite.com/...scar_marks_resolved_and_the_winner_is_godaddy

Unlike the situation on a message board where people think these are simple "yes or no" types of questions, the actual decision is 129 pages long: http://business.cch.com/ipld/AMPASGoDaddy20150910.pdf - mainly because the decision includes a long list of the hundreds of domain names at issue.

 

[Chris Hydrick]

As above, you are responsible for what you do. Other people are responsible for what they do. Worrying about what other people do - whether it is law, morality, or anything else - is a good way to avoid self-improvement.

Thank you for being blunt. That last line really sunk in.

While I agree 'worrying' about what other people do is a good way to avoid self-improvement, could one reasonably argue that 'studying' what other people do is a good way to self improve? I'm never going to be a DropCatch, or a GoDaddy. I get that. These concerns are above my pay grade. I just want to understand how things work.

 

[jberryhill]

could one reasonably argue that 'studying' what other people do is a good way to self improve?

Good point.

As you mentioned, SEDO is absent from the list.

 

[domainer111]

I remember @safesys saying years ago Google could possibly become the rare case of a genercized trademark.

In that case, I understand it actually becomes a word in the dictionary. I believe a famous example is "hoover" which started as a trademark. It's before my time so I don't recall "hoover" as a trademarked vacuum.

This really must be rare because the word "genercized" is not even coming up in the spell check with a correct spelling :D

 

[jberryhill]

No, it has more to do with Google having threatened SEDO and then SEDO agreeing to police that keyword to settle the threat.

 

[jberryhill]

This really must be rare because the word "genercized" is not even coming up in the spell check with a correct spelling

The word you are looking for (which is not relevant to the circumstances here) is genericized.

https://en.wikipedia.org/wiki/Generic_trademark#Trademark_erosion

And, no, Google is in no danger, because people do not refer to searching in general as "Googling". That term primarily means using Google.

It used to be common in situations where the originator failed to offer a 'generic' name for a new product. Examples include cellophane, nylon, zipper, escalator, thermos, and a bunch of other mid-20th century marks. Domainers making genericization arguments when threatened are primarily engaging in delusional wishful thinking, as it is very rare and is not a matter of "I think it should be."

 

[Kate]

Sedo have a blacklist of TM strings. Trying to list names containing those strings will yield an error. I also think they have some sort of BEL (bad experiences list).

 

[domainer111]

Domainers making genericization arguments when threatened are primarily engaging in delusional wishful thinking, as it is very rare and is not a matter of "I think it should be."

Just to clarify for you:

1. I've never registered any domain with the word "Google" or typo of Google in it, nor would I advise anyone to do that.

2. I'm not making an "argument" as I'm not under threat from this thread in any way, shape or form, I am simply contributing to the discussion.

"Googling" has appeared in various lyrics at various points, unrelated to the engine.

 

[domainer111]

Domainers making genericization arguments when threatened are primarily engaging in delusional wishful thinking, as it is very rare and is not a matter of "I think it should be."

You're falling victim to cause and effect here.

 

[Chris Hydrick]

I just want to understand how things work.

This really must be rare because the word "genercized" is not even coming up in the spell check with a correct spelling :D

"Googling" has appeared in various lyrics at various points, unrelated to the engine.

I am simply contributing to the discussion.

 

[domainer111]

@Grilled, not sure I'm following you on this! I put on the video and I have a headache listening to that guy.

 

[Chris Hydrick]

@Grilled, not sure I'm following you on this! I put on the video and I have a headache listening to that guy.

The above video breaks down Elliott V. Google. -- Google won.
PDF Version: http://cdn.ca9.uscourts.gov/datastore/opinions/2017/05/16/15-15809.pdf

Here's a shorter version on 'genericide':

 

[creataweb]

Remember when that guy bought Google.com for $12?

 

[Chris Hydrick]

No, it has more to do with Google having threatened SEDO and then SEDO agreeing to police that keyword to settle the threat.

I wasn't able to find more information on this when I searched it. Was this incident public ie any certain case I can refer to? Or was it more of a C&D type threat?

Sedo have a blacklist of TM strings. Trying to list names containing those strings will yield an error. I also think they have some sort of BEL (bad experiences list).

The last reported sale of a 'google' domain on Sedo is from April 23rd, 2008.

In September of 2008, Rob comments on TheDomains.com HERE with several live 'google' listings.

 

[Chris Hydrick]

Remember when that guy bought Google.com for $12?

You're talking about Sanmay Ved.
NamePros Thread HERE

 

[jberryhill]

I wasn't able to find more information on this when I searched it. Was this incident public ie any certain case I can refer to? Or was it more of a C&D type threat?

No, it wouldn't be public.

A client of mine used to monetize a large portfolio through Sedo. Every now and then some of the domain names would be deactivated, incident to having a relevant substring, since Sedo would just turn off every domain name that matched the substring. For example something like DelawareBay.com would get shut down because it has "ebay" in it - that sort of thing. Whenever that sort of thing would happen, we'd have to point out that the name was not relevant to the general class of string they had decided to block.

 

[jberryhill]

https://sedo-us1.custhelp.com/app/a...hat-infringes-on-my-trademark-or-intellectual

 

[Chris Hydrick]

Since 2016, there have been 12 reported sales on NameBio containing 'google'. 9/12 [75%] have sold from DropCatch. Tagging @DropCatch Support / @Jeff Reberry for oversight.



Looking at DropCatch's terms and conditions, DropCatch customers knowingly, voluntarily, and expressly agree to assume any and all responsibility, including legal ramifications, that may incur when you backorder, bid on, and/or register a domain using DropCatch services. https://www.dropcatch.com/OtherInfo/TermsAndConditions

If I read the above exert correctly, anybody who bid on GoogleWhack.com [which they might not have backordered, but found the auction via DropCatch front page] could be held liable for any legal ramifications that follow? The auction closed at $1,850. Domainer noobs might see sales like this, and think that since DropCatch is consistently selling names like this, then it's a trend, and as such, they may start bidding.

Also in DropCatch's terms and service, regarding private sellers..

There aren't any current 'google' auctions on DropCatch.
_____________________________________________________________________________________

Below is NameJet [2/12] policy... http://www.namejet.com/Pages/Terms.aspx

If you search for google domains currently in pre-release, you will find 94 results. For example, GoogleLawsuits.com is a direct lister reserve auction between $1,001 and $2,500.

 

[jberryhill]

If I read the above exert correctly, anybody who bid on GoogleWhack.com [which they might not have backordered, but found the auction via DropCatch front page] could be held liable for any legal ramifications that follow?

Yes, and? That's true regardless of whether they put it in their terms or not.

"Googling" has appeared in various lyrics at various points, unrelated to the engine

So? The the lyrics of American Pie include "...drove my Chevy to the levee", in the context of singing about driving one. It doesn't make Chevy a generic word for cars. Paul Simon has an entire song called "Kodachrome". So what?

But, as pointed out above, the Google example has already been run up the flagpole to the relevant US federal appeals court, with the unsurprising result:

http://www.ipwatchdog.com/2017/05/20/court-finds-google-not-generic/id=83476/

I mean, sure, if someone wants to argue that things have changed dramatically since March of this year, they are welcome to try, but in the context of a domain forum where, in general, we are not talking about people with the resources for a serious legal challenge to anything, it's just irresponsible to casually suggest "oh, no worries, its generic". I mean, sure, its fine to do that if one doesn't care about the consequences to people who might mistakenly believe that pseudonymous people on an internet forum have any idea what they are talking about.

Genericide is very rare, because (a) the legal presumptions are against it - in other words, it has to be shown by overwhelming evidence, and (b) people who casually claim it are usually ignorant of the evidence on the other side.

Three perennial examples are Kleenex, Band-Aid, and Xerox. A LOT of people will refer to any facial tissue as a "Kleenex", any adhesive bandage as a "Band-Aid" and any photocopy as a "Xerox" - and those usages have been a heck of a lot more common than Google. The way these things go, and this kind of thing is noted in the Google decision summarized at the article linked above, is that the person claiming genericide will come in with an assortment of press clippings, etc. where someone referred to a tissue as a Kleenex or whatever and suggest that the mark owner hasn't been policing their mark and thus it has become generic. And then, most every time, the TM owner comes in with their "enforcement file" - the collection of letters for which they employ a small staff to (a) scour publication indices like Nexis for press mentions of their mark, (b) identify the publisher, (c) check their backfile, and (d) send, or remind, the editor, reporter and publishing company a note concerning usage of the mark. Most of the time, the majority of press references used by the party claiming genericide will have already been followed up with an enforcement letter from the TM owner.

There are people who believe kooky stuff and spread it like a virus. I had this one guy pestering me years ago about how he could ABSOLUTELY PROVE that Coca-Cola wasn't a valid trademark. Sent me a ton of emails with his proof, which essentially boiled down to the same case decided in Coca-Cola's favor back in 1917 against the claim it was merely descriptive of two key ingredients (cola extract and coca extract) that are used in it. He wanted me to take his case for free, since it would make me famous! I finally had to block his email address, since he became increasingly upset that I failed to recognize his genius.

 

[offthehandle]

Anyone can also soon buy Northrop on Namejet. Lol. I believe one of the top 10 oldest domain names too.

http://www.namejet.com/Pages/Auctions/BackorderDetails.aspx?domainname=northrop.com&cat=

Or even after the merger with Grumann.

http://www.namejet.com/Pages/Auctions/BackorderDetails.aspx?domainname=northropgrummancorp.com&cat=

 

[Silentptnr]

A year or two ago, I regged...and sold for a good price.... gxxxle.com. Not exactly the name, but close. Never had a problem.

Now, I once built a website and the logo I designed was remotely similar to google logo (colors and font), and I did get a letter from google tm team demanding the logo be changed. I changed it.

From that experience, I learned that google tm team often works on reported incidents. Someone reports it, they look into it.