Hi David,
That was not meant as an ad hominem argument, it was an honest question. An ad hominem attack would be something like me telling you that dropping the only Latin phrase you know in an internet discussion does not a debater make.
I’ll make it clear that I appreciate your thread and the effort you’ve put in by taking a stance on the issue, but with it comes a heavy responsibility to not mislead or misinform people on the requirements of a valid trademark infringement claim.
At one time I actually considered becoming a lawyer, but ultimately decided to settle with an MBA, and since have enjoyed 20 plus years of successful business practice. To pursue law was more in the interest of an elaborate hobby than to actually practice publicly (and let’s be honest: to save me from being gouged by any more of the obscene legal costs I’ve paid with past ventures). That said, I have studied Business Law – basic Intellectual Property Law with a special interest in Cyber Law (the Law of the Internet and Information Technology), more specifically – in a formal academic setting. In no way would I claim to be an expert, but that bit of education, coupled with my plethora of experience in building multiple multi-million dollar ventures across several continents, has provided me with at least a working knowledge of the basics.
So back to my point: the obvious examples of TM violations are just that – obvious. The various forums for buyers/sellers have an ethical responsibility to investigate and monitor these types of inclusions. It’s a very difficult issue to pursue Contributory Trademark Infringement with respect to those marketplaces, unless the legal team of the TM holder properly informs (in this case) Flippa with the knowledge required to govern accordingly. It’s not up to them to weed out the lesser known TMs, let alone big brand TMs, and it is patently unreasonable to expect this without the Trademark Owners’ representatives. (Ref: Tiffany’s (NJ) v eBay Inc. (2nd Cir. 2010)). Yet this is what you imply in your attack against Flippa.
The onus is then on the buyer to be accountable, to perform their due diligence before making a purchasing decision for their business. If the so-called ‘entrepreneur or domainer’ is incapable of carrying out this basic step, then he should perhaps consider a comprehensive overhaul of his business plan before another venture down the self employment path. It’s been this way since the start of commerce, and no amount of digitization of the marketplace will change the fundamentals of ethical business planning.
It is tricky to point a finger and cry trademark violation if you are not the TM holder or the courts. We simply don’t know all the facts, and unless you are able to succinctly cite reasonable case law to pursue the grey area of proposed violations, leave it to the appropriate representatives. Even amongst TM owners and their representatives, utilizing the Lidham Act, UDTPA, and of course, the likelihood-of-confusion test (applied by the courts), there are many examples of “big brands” losing their Trademark Infringement action. Take Toyota Motor Sales U.S.A., Inc. v. Tabari (2010) (Buy-A-Lexus.com; BuyorLeaseLexus.com), or Toyota vs Prius (a great foreign country example), or (2015-Paris) Gucci vs Guess (albeit not internet-based), which also lost in both Italian and American courts. These are all high profile cases in which public policing would have had the potential to cause irreparable harm.
My main concern in the pursuit of suspected trademark violations is where it fades into ambiguity. The responsibility for this assessment must move beyond public opinion and onto the TM holders and their legal advisors, or else risk becoming censorship. Self policing crusades have limits that they would do well to recognize. Consider cases where a company gave written permission for use of their trademarked word in a domain name (it happens, and with well-known corporations), or where the alleged offender lives abroad, or when the registered domain owner has more at play behind the scenes, guiding him/her in an entirely unique direction. Simply recognizing a name and proclaiming a TM violation is woefully insufficient.
The key factors in play are aspects such as geography of the domain holder (i.e. does the mark have significance in their region, are they a “first to file” country, etc.), the foundation of the trademark in question (their registered products/services: wares), timelines of registrations and filings, and so on.
Pertaining to the first consideration above, although most countries work together in harmony with respect to trademark details, each country has their own specific set of rules and laws. This is why large multinational corporations must go into each country of interest and deal with the registration of trademarks specific to those regions of the world. What might be easy to trademark in Canada is not in the U.S., and vice versa. To gain a better understanding, reference The Paris Convention, Madrid protocol and the Trademark Law Treaty (TLT). Oftentimes trademark owners must take the appropriate steps to ensure their rights to the mark are recognized in any country they seek to explore.
Even for corporations that do have their legal teams complete the appropriate trademarks, most of the focus is on the registered products/services associated to the mark. This is how you can have multiple companies with the same name, each having a trademark, but strictly defined as distinct from the next.
To be clear, I am not saying Cybersquatting doesn’t happen – it most certainly does, and as you strongly believe, it needs to be handled.
Instead of posting a thread on this topic solely to point out issues with specific domain names and how Flippa deals poorly with them, use your reach and intellect to either:
a) Bring in some IPL experts and run a series of Q&As for people to engage in a little ongoing series of learning threads. If ignorance is bliss, the threads of TM violation must be the ultimate nirvana. There is no mention of the multitude of tests, statutes, or regulations that have been implemented throughout the world markets to protect and regulate Trademark/Trade Name and Service Marks.
b) Point out those domains and educate the typical user of Namepros on some of the dos and don’ts of sourcing domain names. Use your examples as reference (Flippa and elsewhere), defining the potential TM violation with examples and references. After all, it’s a marketplace for domainers, in fact, the largest, and these people are the primary target. Nip this sh*t in the bud. It starts with the people responsible for the registration and selling of domain names. And until the laws change, has very little to do with free-market buyer/seller venues.
For now I’m tired of hearing people make claims and accusations based on wild opinion, because they’ve watched one too many episodes of Matlock reruns, picked up bits and pieces of information here and there or have based it all on a random selection of case law, without considering the many intricacies from a well rounded reference of past precedent.
Personally I’m done with this topic for now.
Do your fellow domainer/blogger proud and help educate them on the facts of Cyber Law. Leave the policing of potential infractions to people letting large corporations and TM holders know of the potential infractions, and stop mindlessly attacking the middle market…the courts rarely hold them liable, what makes you believe your knowledge is superior to the governing bodies of law?
