Trade mark question

[patches]

I have the domain sanitysearch.com. While doing a search on Google I came across the name Sanity Search with a tm mark. I then went to the US Trade mark site to check it out. There are so many words and phrases that are trade marked. How much of a problem is this for domain speculators? I also ran across several dot coms while there. Your comments are appreciated!!

 

[TLDnetworks]

Trademarks are real tricky, but are often misunderstood. If the trademark is valid, you would need to clarify the class of use; also is it a word mark, drawing mark, etc... The "TM" shows notice of a pending registration, while the circle "R" is a registered trademark and can only be used legally if they actually are registered and finalized.

Many people add the "TM" even though it's not actually trademarked. By doing so, they are essentially creating a first use in commerce and a common law trademark - This may or may-not hold up in court. Really just depends how aggressive they/you want to be in protecting/disputing it. To be safe, consult a trademark lawyer.

 

[Dave_Z]

Only a seasoned attorney who does this can authoritatively answer you. But
let me share some feedback as well.

The complaining party will have at least 3 problems:

1. The words themselves are common.

2. There are several marks for the words in question.

3. The complaining party, if they use UDRP, must prove bad faith. Here's one
example:

strongarm.com ttp://arbiter.wipo.int/domains/decisions/html/2001/d2001-0776.html

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

On this point, the Complainant argues that the Respondent registered the domain name for the purposes of reselling, "possibly in bad faith". Against this, the Respondent’s pleading is more voluminous, arguing that the Complainant cannot meet its burden of proving bad faith registration and use because:

"There simply is no evidence, whatsoever, that Respondent registered the Disputed Domain for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt Complainant’s business or attract customer’s [sic] seeking to purchase its products. Nor is there any evidence that Respondent even had knowledge of Complainant or its trademark when it registered STRONGARM.COM." (Response, Part C.)

We agree with the Respondent. It is not enough to suggest that the registration of the domain name was "possibly in bad faith". There must be evidence of bad faith, either by making out the exemplar requirements in paragraph 4(b) of the UDRP, or by some other showing of bad faith. The Complainant has not presented any evidence to show the necessary elements of bad faith registration and use on the part of the Respondent. No evidence is shown that the name was offered to the Complainant or a competitor. No evidence is presented that the name was registered to stop the Complainant from reflecting its name in the DNS. And so on. In short, no evidence is presented of bad faith at all.

The complainant must prove their arguments if they're to win.

A pair of suggestions, also: a) never post the actual domain name when about
to ask a legal question or more in a forum, and b) you might want to ask this
in the legal section.

 

[patches]

I looked at an archived web page where the domain name in question is located. There was a TM mark on sanity search at that time. This was 1 year before I aquired my domain. I really can't afford to ask a lawyer about this. Any suggestions as to what direction I should take? Do you suggest I contact this person and just hand over the domain. (It would cost me $25 to transfer the domain).The owner of this site does searches for patents and wouldn't you know it ..He's a lawyer. P.S. I could not find a record of this being registered as a trade mark at the US trademark site. Possibly a common law trade mark as you said. Please tell me what you would do. Thanks!!

Thanks Davezan!!! Just wish I would have seen your info before I made my last post. Thanks for the advise. Thanks to all of you for the great forum!!

HERE'S A PS TO THIS POST.
When I registered this domain I had every intention of developing a drug addiction related site. Since this has no relation to the current use of the TM name, should I go ahead with my site? Would it be wise to contact the TM owner and explain my intent for the use of this name? Please advise.

 

[Dave_Z]

When I registered this domain I had every intention of developing a drug addiction related site. Since this has no relation to the current use of the TM name, should I go ahead with my site?

Then what in blazes are you waiting for!? Do it! :D

Would it be wise to contact the TM owner and explain my intent for the use of this name?

Does the TM owner have exclusive rights to use the name in question, given
there are several other trademarks for the 2 words?

Please advise.

I don't advise: I suggest. There's a difference.

 

[patches]

Thanks davezan!!! I appreciate your suggestions!
Best wishes!