Selling domains with trademarks

[michaeldotcom]

I would like to open this new thread in the legal section to discuss the serious issue of selling domain names which contains trademarks. I'm not talking about the whole debate about some companies who are trying to trademark generics, but I'm talking here about tradenames, brands.

I've noticed that there's a lot of people who have registered and are still registering domains that contain Google, AOL, eBay, Yahoo, Microsoft, etc. You can just take a look in the appraisals section or through the expired domains to see what I mean.

We've started this debate in the thread appraising the domain GoogleMethods(.)com and I would like to move this debate here in order to get more specific legal advice on this matter.

I personally think that selling a domain containing a trademark/brand (especially from big corporations such as Google) is considered as selling illegally a trademark which you don't own and can result in a big lawsuit and huge fines.

However, hogan99 has a different point of view on that matter and wrote the following about selling domains containing a trademark like Google :
"I don't think anyone has anything to lose unless they actually develop something that is libelous or tangibly harms the corporation ... they only can lose anything they $ made and the few dollars spent on registering the name."

Could someone with some legal expertise please clarify this ?

Thanks in advance.

 

[DebX420]

If you register a site that has a trademarked term in it, and you sell that site solely on the fact of the said trademarked term, you are looking at some serious trouble, as technically you are profiting from a trademarked name.

 

[liquidcherry]

I have no legal expertise, nor do i give legal advice here.....

Just let me give you an example...put yourself in the picture....you own a company, you worked hard to establish your business...established a brand(it doesn't matter that your company rakes in billions on a yearly basis)

And then someone reggs a domain with your businessname in it because you havent thought of that name combination nor do you have time to regg thousands of domains with your name in...

Would you like the fact that someone else is making money with your name??

That's where the TM businees comes into the game....

Cheers,

Frank

 

[michaeldotcom]

Frank,

If I disagree completely with generics being trademarked (cf. the whole Snowe Bill debate), I understand and agree completely with the need of protecting trademarks and tradenames.

I understand that companies and corporations defend themselves and sue in order to protect their trademarks, even though they can sometimes be very aggressive about it.

The whole point of this thread and what I was trying to explain in the appraisal section is different.

I was just trying to explain to some members that it's NOT ok to try and make a few bucks by selling domains like google*****.com or yahoo*****.com

I think that this can lead to very costly lawsuits and hefty fines that some domainers don't seem to fully understand. It's just about trying to raise awareness.

That's why I was looking for someone with legal expertise who can give some precise analysis on this topic.

 

[liquidcherry]

Frank,

If I disagree completely with generics being trademarked (cf. the whole Snowe Bill debate), I understand and agree completely with the need of protecting trademarks and tradenames.

I understand that companies and corporations defend themselves and sue in order to protect their trademarks, even though they can sometimes be very aggressive about it.

The whole point of this thread and what I was trying to explain in the appraisal section is different.

I was just trying to explain to some members that it's NOT ok to try and make a few bucks by selling domains like google*****.com or yahoo*****.com

I think that this can lead to very costly lawsuits and hefty fines that some domainers don't seem to fully understand. It's just about trying to raise awareness.

That's why I was looking for someone with legal expertise who can give some precise analysis on this topic.

I agree 100% with you and my answer was not directed at you, i rather would like to educate new members,....like u do

(because they hopefully will read this here)

Cheers,

Frank

 

[jberryhill]

I was just trying to explain to some members that it's NOT ok to try and make a few bucks by selling domains like google*****.com or yahoo*****.com

It's not okay.

At this point in time, if they do not understand that it's not okay, then I don't see how you are going to convince them of that, or why you feel the need to.

 

[liquidcherry]

It's not okay.

At this point in time, if they do not understand that it's not okay, then I don't see how you are going to convince them of that, or why you feel the need to.

JB, you are right but we (as seasoned NP 'er) know the game...but for a newbie it's sometimes hard to understand or imagine what we are talking about...for that, there is not a rule like"they have to understand it when we say it once".....so, we have to tell everybody new to the game over and over again...it's our duty

(if they don't get it they have to hire you!!) :lol:

Cheers,

Frank

 

[hogan99]

Again .. will qualify this by saying that I have absolutely NO legal experience with any of this.

I understand that a company that has worked hard to build itself into something would not like someone making money off that name .. that is clearly a trademark infringement in most cases ... however, i do believe that there are means where a trademark could be used in a domain name, such as parody or 'opinion' or fact based site that is not libelous or damaging to the corporation.

but even if that is not allowed, i don't understand where one would receive 'heavy fines' or get in 'big trouble' for running (or trying to run) a website that contains a trademarked name. The only entity that 'fines' is the government and I don't see them fining someone over this. The company with the trademark would only get $$$ from the offending domain name owner if they can prove legitimate damage in a court of law ... they would probably just be happy to use legal muscle to get the site shut down.

all in all .. this is an interesting discussion .. what constitutes legal 'fair use' and what is a legitimate (not just a big company legal eagles idea) of 'trademark violation'.

I would love to here from someone that actually has the legal experience on this, but in the meantime the rest of us non-legal folks will share our humble opinions.

 

[DNQuest.com]

but even if that is not allowed, i don't understand where one would receive 'heavy fines' or get in 'big trouble' for running (or trying to run) a website that contains a trademarked name. The only entity that 'fines' is the government and I don't see them fining someone over this. The company with the trademark would only get $$$ from the offending domain name owner if they can prove legitimate damage in a court of law

A company, under the ACPA, could get $100,000.00, legal fees, actual damages, punitive damages, a domainers proceeds from the domain... seems to be a lil bit more than jsut $$$. They can get a lot if they wanted to go that far.

... they would probably just be happy to use legal muscle to get the site shut down.

and most would.

I would love to here from someone that actually has the legal experience on this, but in the meantime the rest of us non-legal folks will share our humble opinions.

They do post sometimes here, but people still won;t listen to them. If you do enough searching in the legal section and read past threads, you will learn.

But for htis subject, any form of monetary gain could constitute bad faith. That includes reselling. There are ways to have "good faith" intentions, but I will say this, if there is a TM in the appraisal thread, then the intention is to profit (I do with NP deletes any obvious TM appraisals). Remember, usage plays an important part in determining bad faith.

 

[seven]

I would like to open this new thread in the legal section to discuss the serious issue of selling domain names which contains trademarks. I'm not talking about the whole debate about some companies who are trying to trademark generics, but I'm talking here about tradenames, brands.

I've noticed that there's a lot of people who have registered and are still registering domains that contain Google, AOL, eBay, Yahoo, Microsoft, etc. You can just take a look in the appraisals section or through the expired domains to see what I mean.

We've started this debate in the thread appraising the domain GoogleMethods(.)com and I would like to move this debate here in order to get more specific legal advice on this matter.

I personally think that selling a domain containing a trademark/brand (especially from big corporations such as Google) is considered as selling illegally a trademark which you don't own and can result in a big lawsuit and huge fines.

However, hogan99 has a different point of view on that matter and wrote the following about selling domains containing a trademark like Google :
"I don't think anyone has anything to lose unless they actually develop something that is libelous or tangibly harms the corporation ... they only can lose anything they $ made and the few dollars spent on registering the name."

Could someone with some legal expertise please clarify this ?

Thanks in advance.

Here you are talking about the explicit use of a company's trademarked name combined with something else to build a site. In this case, it is a trademark infringement and basically those with the names are at the mercy of whether the company decides to enforce their rights.

 

[michaeldotcom]

In this case, it is a trademark infringement and basically those with the names are at the mercy of whether the company decides to enforce their rights.

Exactly ! Especially if you're trying to sell these names.
That's why I've been warning people looking for appraisals on trademarked names. They're just asking for trouble.

 

[flamewalker]

Most of the time the companies will just demand you turn it over and stop... some will spend a lot of money and make an example out of you... is it worth the risk? IMHO, no.

 

[Dave_Z]

Could someone with some legal expertise please clarify this ?

http://www.namepros.com/search.php?searchid=2060350

http://www.namepros.com/search.php?searchid=2060356

I agree with John on why the need to convince them. Just tell them the pros
and cons, then let them decide on their own.

 

[frankiethepet]

I have no legal expertise, nor do i give legal advice here.....

Just let me give you an example...put yourself in the picture....you own a company, you worked hard to establish your business...established a brand(it doesn't matter that your company rakes in billions on a yearly basis)

And then someone reggs a domain with your businessname in it because you havent thought of that name combination nor do you have time to regg thousands of domains with your name in...

Would you like the fact that someone else is making money with your name??

That's where the TM businees comes into the game....

Cheers,

Frank

Yeah but for example... if the company is maybe like TV related. Lets say its an adult channel called HARDON-TV... television channel...

but then another guy has regged the domain HARDON.TV and HARDONtv.com and he has an adult pornsite/channel on the internet.

Its not the same i think... its 2 different businesses... its like comparing a business in russia and a business on hawaii. So just because the company has A tv channel with that name they automatically have the right to the Internet site and internetchannel too... i think it is 2 different worlds.

like this: the old TV producer who owns a porn channel doesnt know much about the new thing thats called "internet"

but a young entrepenaur and web developer starts the pornsite and then the old tv producer Suddenly realize, maybe i would start with that internet thing too, and i should have the right to that website!!!

i think that is wrong... he was an old dog with an old business... the internet is the new thing... i mean of course if someone started a TELEVISION channel with the same name he should be able to take it to court... but an internetchannel is a whole new ballgame,,, its a new world...

 

[flamewalker]

Your example is flawed... they could claim common law (if not registered) tm on the term...the website is infringing on the tm in essence, thus the website would "probably" lose a udrp if the tv show can show they have prior use...