question Selling trademarked domains

[MKA]

A couple of domains I've registered over the years have since gotten trademarked. I've never had any issues with UDPR, and I don't think I will, because I was there first.

But what I'm wondering is, how do the trademarks affect potential clients? Should they be worried about retaliatory action from the trademark holders if they buy a domain from me? More notably, is there a way for be to assure my client that it won't be an issue?

Because if I understand it correctly, acquiring a domain in bad faith doesn't necessarily have to be through hand-registration but is also possible on the aftermarket.

 

[jberryhill]

More notably, is there a way for be to assure my client that it won't be an issue?

This is a good question, but the short answer is no, there isn’t. The long answer is, unsurprisingly, longer.

First, it’s going to depend on what sort of a domain and mark we are dealing with. I’ll walk through two examples using two different types of mark.

Let’s say it is what’s called an “arbitrary” mark - a dictionary word used in a non-descriptive association with the goods or services. Eg “Apple” for computers, or “tide” for dishwasher detergent.

If you have example.com, and someone starts selling “example” brand shoes, then whether your buyer is going to have an issue depends on what your buyer is planning to do. Are they going to provide example math problems for students? Are they going to sell shoes? The outcomes in those two situations are going to be wildly different.

Let’s say instead it is a fanciful mark - ie a mark that is a made up word with no other meaning - “xerox” for copiers or “Microsoft” for software. Let’s say you have zuliduma.com. For whatever reason, a drug company invents a cure for all cancers and calls it Zulidima. It becomes the most popular drug on earth, known to everyone. The sad fact of that situation is that you are locked in. No one is going to believe the buyer of the name bought it except for its value as the highly distinctive name of the most famous drug on earth.

Ultimately it is going to boil down to the plausibility that the buyer obtained the domain name for a non-infringing use. That plausibility is going to be limited by the degree of distinctiveness of the junior mark, it’s relative fame, and the apparent utility or not of the domain name for some other purpose.

Typically buyers are pretty tight lipped about their business plans for a domain name, so it’s an open question since the result depends on what they have in mind.