question Trademark infringement advice

[entrepreneur37]

Hi, I'm new. I'm interested in buying a domain for sale. However, I am afraid of the legal consequences.
1. How to register a domain to make sure there is no such or similar trademark. in Uspto, almost any word I write has such a trademark. In addition, there may be, for example, a dogstore trademark and I may have checked and registered the dogshop and they have accused me of being similar and infringing on a trademark. How do I check so many thousands of options?
2. I want to register domains with a combination of dictionary words. For example, newphone, cheapshop, prodesign and more. 100% with any of these words will have a trademark for example with the word design. How to avoid trademark infringement and have no problems.
3. If I register a domain for sale and have such a trademark, can they sue me and take my money?
Why will it cost me money if I have nothing on the site and domain address or ads or anything. Just a blank page. How can I do such damage to them to judge me for money?

 

[BlackCatsAreNice]

Just because SOMEONE has a trademark on a name doesn't necessarily mean you CAN'T buy the domain equivalent. Just make sure you don't engage in any business that covers the trademark they were assigned for.

For example, Dole could trademark Pineapple for the sale of the fruit.

You can have a "Pineapple" domain that sells the dirt between your toes.

No infringement. Only happiness.

 

[entrepreneur37]

Yes, if he sells apples and I socks I will not infringement trademark.
But I don't sell anything I buy a domain for sale. I think in wipo I read that it was considered a trademark infringement if the domain was purchased for sale.
there will be nothing on the domain page itself. It will be a blank page. I don't sell anything or apples or socks. If I was selling anything other than theirs there would be no problem. But I'm not selling anything but I'm selling the domain. And this seems to be a trademark infringement

 

[BlackCatsAreNice]

Yes, if he sells apples and I socks I will not infringement trademark.
But I don't sell anything I buy a domain for sale. I think in wipo I read that it was considered a trademark infringement if the domain was purchased for sale.
there will be nothing on the domain page itself. It will be a blank page. I don't sell anything or apples or socks. If I was selling anything other than theirs there would be no problem. But I'm not selling anything but I'm selling the domain. And this seems to be a trademark infringement

selling a domain name is not trademark infringement as far as i know but talk to an ip lawyer.

 

[topdom]

I wouldn't worry much about TMs. If it contains Google, or Facebook, it would be bad investment. If it contains Apple, Amazon,.. probably nothing to worry about, but depends on the context. You need to be careful if you plan to sell for 100K, while the actual value is like 1K, and 100K sale is really possible because the buyer is rich and desparate, then you need to have your arguments in advance in case they attack.
One of the bad scenarios can be like this, you own hilton.com , and hilton is generic so you would be safe normally, but you also have sheraton.top, radisson.online, then just because of owning some worthless (and only slightly risky by themselves) domains, you may lose your good domains.
So, don't give your enemies tools they need, but make sure you have enemies (buyers).

 

[entrepreneur37]

this text is from wipo
Post-Delegation Dispute Resolution Procedure (PDDRP)
Designed by ICANN, the PDDRP is a higher-level RPM and an administrative alternative to court action regarding registries. Involving a number of procedural layers, this mechanism is intended to allow trademark owners to address certain scenarios where a registry operator’s operation or use of a domain leads to or supports trademark infringement, either on the top level or second level. There are three types of PDDRP: the Trademark PDDRP, the Registration Restrictions PDDRP, and the Public Interest Commitments PDDRP. The WIPO Center has been appointed as a provider for the Trademark PDDRP.

Under the PDDRP trademark owners will be required to demonstrate, by clear and convincing evidence a) affirmative conduct by a registry at the top level that infringes a trademark; and/or b) at the second level, affirmative conduct by a registry that amounts to a substantial pattern or practice of specific bad-faith intent by the registry to profit from the sale of domain names that infringe trademark rights. The PDDRP as set out by ICANN states that a registry operator is not liable under the PDDRP solely because infringing names are in its registry, or the registry operator knows infringing names are in its registry, or it did not monitor names registered in its registry.

 

[entrepreneur37]

It won't contain facebook or google, I'll give you an example of the ones I want to register.
cheapshop dot com
animalcare dot com
newhome dot com
prodesign dot com
healthstatus dot com
electriccar dot com


Because I read about UDPR solutions for domains taken like wehealth dot com nexteratrading dot com musclenfitness dot com and many more that are not as big as google or facebook and are common words but were nevertheless taken by their owner.

 

[topdom]

It won't contain facebook or google, I'll give you an example of the ones I want to register.
cheapshop dot com
animalcare dot com
newhome dot com
prodesign dot com
healthstatus dot com
electriccar dot com

These look totally safe. I would buy them if they were cheap. but I don't think you can buy them for less than 5 figures (except for, maybe, drop auctions).

Prodesign could be risky if there is a famous brand with this name, and you enter their area.
I think it is not very fanciful, for example you can say in case of a complaint, prodesign can stand for
professional design, and pro always means professional, and everyone would understand it this way.
And probably, if there is a brand with this name, then it can't mean professional design, because then it would be like branding a generic term in its usual meaning. For example the word apple can't be branded to sell apples. Or if branded in its usual meaning, then that brand wouldn't be strong (fanciful).

I lost a UDRP because of ppc ads on the landing page which earned zero cents. They committed a crime, but I allowed it to happen by not being careful enough... But getting no offers is worse than getting a complaint (unless a real crime is committed). I wish I get CD letters everyday, I would prefer them to price requests from Afternic.

 

[entrepreneur37]

Yes these were just examples of what domains I'm aiming to register. These will probably not be free, but similar to those. I wanted to show that they would use such commonly used vocabulary words. Like home, new, cheap, design, laptop, games, tax, consulting and more.
I am looking to combine vocabulary words and search for free domains.
But as I say, part of the domain is the same as part of the TM, or there is a TM with similar spelling and sound. But the words will be vocabulary similar to those I gave an example of.
Do you think I will have any problems?

 

[topdom]

I wouldn't worry at all.
photoshop can be a famous brand,.. but you can still buy photoshop.com if you can, and defend it in case there is a complaint.
If currently available, probably not worth registering. It can be like this, you buy sanantonioplumbingservice.com, and maybe because it is long noone was interested in registering it, but you can convince someone from san antonio and sell such a domain for say 300. NoTM would exist for such a keyword, but even so, no need to worry.
You can buy something like flowerpay.com, it doesn't have any meaning, so it would be like a brandable domain. If there is no such brand yet, who would buy it from you, you may need to wait for 10 years until someone creates such a brand.

 

[entrepreneur37]

Want to try to register and sell. But as you said, if they don't buy me a domain name, it's not a problem, the bigger problem is if I'm dealing with a court and I have cases and such.

1.Can I commit a real crime if I just registered the domain and sell it without ppc ads or other. Just a blank page. And I run the domain for sale in namcheap, sedo and others
2.If I have registered a domain for sale and have infringed a trademark if I do not have any ads or links to other sites but a blank page or at most it says that the domain is for sale. Worst case is they take my UDPR domain, but they can't judge me and take my money right?

 

[topdom]

Want to try to register and sell. But as you said, if they don't buy me a domain name, it's not a problem, the bigger problem is if I'm dealing with a court and I have cases and such.

1.Can I commit a real crime if I just registered the domain and sell it without ppc ads or other. Just a blank page. And I run the domain for sale in namcheap, sedo and others
2.If I have registered a domain for sale and have infringed a trademark if I do not have any ads or links to other sites but a blank page or at most it says that the domain is for sale. Worst case is they take my UDPR domain, but they can't judge me and take my money right?

Probably no crime in such cases, and you would only lose the domain at worst, and losing one udrp can be used against you in other udrps.

What would be a punishable crime. For example you buy adidasshoes.com and sell fake adidas shoes. Or send emails with adult content from info at adidas.rodeo.

I'm not a lawyer, but just some basic commonsense should be enough in most cases.

 

[frank-germany]

you don't want to ask a random domainer for TM advice
ask a TM lawyer

 

[enlytend]

(There's some questionable advice in this thread! )

A trademark isn't just someone paying money to "own" a word or mark, it uniquely identifies a specific producer of goods or services and applies to the class or classes of goods and services for which it is registered. A trademark distinguishes one producer of a type of goods or services from others.

To simplify it greatly, infringing is about someone else capitalizing on the mark holder's business.

Smartest thing you can do is read up on trademarks. What they are, how someone gets one, classes of goods and services, types of marks, what makes something inelegible for a trademark, what constitutes infringement ...

This is a good start - https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm

If you have questions about a specific domain, then this -

ask a TM lawyer

 

[entrepreneur37]

you don't want to ask a random domainer for TM advice
ask a TM lawyer

To say the principle for a domain to tell me if I can register it, a lawyer should consider checking it for trademark matches to determine if I will have problems with vocabulary and more. There will be a different approach for each case, there is an individual solution for each individual domain. However, if I register 10 domains I have to pay 10 times and for each new domain I have to pay. When I sell a domain, I will make about $ 100-300 $ no way to pay a lawyer a long time because I will be at a great loss
I understand it is best to ask a lawyer. Nor am I hesitant to give money to a lawyer. Just in my case, selling each domain will lead to more loss. In that case I would be profitable if I didn't sell at all.

 

[frank-germany]

To say the principle for a domain to tell me if I can register it, a lawyer should consider checking it for trademark matches to determine if I will have problems with vocabulary and more. There will be a different approach for each case, there is an individual solution for each individual domain. However, if I register 10 domains I have to pay 10 times and for each new domain I have to pay. When I sell a domain, I will make about $ 100-300 $ no way to pay a lawyer a long time because I will be at a great loss
I understand it is best to ask a lawyer. Nor am I hesitant to give money to a lawyer. Just in my case, selling each domain will lead to more loss. In that case I would be profitable if I didn't sell at all.

it will cost you much more when you don't ask a lawyer

why don't you just stay away from domains that could cause problems?

 

[karmaco]

Your best bet outside of talking to a lawyer is checking TESS before you register anything. Also for the sake of not wasting money, check words reversed for 2 word domains to see if they are developed.

You are going to find very quickly almost all great names are allready registered and you will need to buy at auction etc to get quality names. Check those too for trademarks.

I like your caution, more domainers should have it. Good luck.

 

[enlytend]

I understand it is best to ask a lawyer. Nor am I hesitant to give money to a lawyer. Just in my case, selling each domain will lead to more loss. In that case I would be profitable if I didn't sell at all.

Once you take some time to read up and learn the basics like I mentioned above, you should be able to understand which domains are generally “safe” to register and which are not 99% of the time.

Stay far away from famous brands.

 

[entrepreneur37]

it will cost you much more when you don't ask a lawyer

why don't you just stay away from domains that could cause problems?

So that's why I wrote in the forum to ask what exactly should I avoid, when will I have problems, etc.

Your best bet outside of talking to a lawyer is checking TESS before you register anything. Also for the sake of not wasting money, check words reversed for 2 word domains to see if they are developed.

You are going to find very quickly almost all great names are allready registered and you will need to buy at auction etc to get quality names. Check those too for trademarks.

I like your caution, more domainers should have it. Good luck.

And are TESS worldwide trademarks or USA only? In TESS alone, will demand be enough? There is also a wipo search engine that checks again for trademarks but not all over the world. Will TESS + wipo be enough?
I am looking to check all combinations in reverse and any ways to be sure. Just sometimes there are partial matches or something like that, and there I get a lot of confusion and wonder if I will break the trademark.
You are very right that almost all kind words are busy and I have to buy already registered or register things that will be searched in the future.

Once you take some time to read up and learn the basics like I mentioned above, you should be able to understand which domains are generally “safe” to register and which are not 99% of the time.

Stay far away from famous brands.

I read a lot but when looking at solutions in wipo / udpr I was very surprised on many occasions. There are many specific things. As in the forum, they said that the word "realtor" violates TM because it is believed that this company has introduced the word in English.
Definitely if I had heard of a brand I wouldn't have registered it on purpose. However, there are smaller companies that are not known in my country and if I do not do a proper brand search or there is a partial coincidence and consider that this is not a problem but then it may turn out that I did not evaluate correctly.

------------------

Business with a lot of money is made easier. If I had the money I would hire a lawyer and an accountant and many other things. I wouldn't worry about the consequences either. In my case, being judged may cost me not my business but my life.

 

[enlytend]

As in the forum, they said that the word "realtor" violates TM because it is believed that this company has introduced the word in English.

The generic term for someone who sells real estate is a “real estate agent” or a “real estate broker.” The National Asociation of Realtors made up the term “Realtor” and it means only those real estate agents who are members of their organization.

Many people think it is generic because a lot of real estate agents are also Realtors, but it’s not.. NAR aggressively polices (enforces) their trademark because if they didn’t they could lose it.

 

[entrepreneur37]

In your opinion, estibot trademark checker can be a correct or almost correct assessment. Or it is completely wrong. Whether to use estibot trademark checker + personal check in uspto + wipo + google.
Are there any other tools besides estibot trademark checker?

 

[entrepreneur37]

In your opinion, estibot trademark checker can be a correct or almost correct assessment. Or it is completely wrong. Whether to use estibot trademark checker + personal check in uspto + wipo + google.
Are there any other tools besides estibot trademark checker?

i read in this thread - "Something Estibot does right, registrars need the same!"
I also saw this thread where they said that namecheap and namesilo if you register a domain that contains TM may give you a warning.
For godaddy I also read that there is such a tool.
But most of all I am interested in namecheap and namesilo is this thing now?

And I want to thank everyone !
This forum is unique and the people in it are amazing !

 

[topdom]

I interpret TM checker to my advantage: No trademark, no problem (there may be actually, but I have something to say at least). If there is a TM I have an excuse. If I don't have an excuse then probably I made a stupid investment, not because I will be UDRP'ed but because noone would buy my domain.

 

[Ategy]

But as I say, part of the domain is the same as part of the TM, or there is a TM with similar spelling and sound. But the words will be vocabulary similar to those I gave an example of.
Do you think I will have any problems?

There are way too many grey zones, exceptions and interpretations of trademark rules and laws for ANYBODY to give you an answer about if you will have problems or not without knowing the specific domain.

The best thing you can do right now is follow what @enlytend has suggested, and that's to get yourself informed on the general rules and laws to the point where you are comfortable of being mostly right most of the time (for some domains there are no real guarantees).

In your opinion, estibot trademark checker can be a correct or almost correct assessment. Or it is completely wrong. Whether to use estibot trademark checker + personal check in uspto + wipo + google.

That's completely wrong .. yes definitely do check if you're concerned .. it could help you find something .. but at the same time it's VERY important to remember that just because you don't find something doesn't mean there isn't a trademark.

Not only that, but the biggest mistake domainers make is FALSELY assuming that just because there is no trademark registered, that it means there is no trademark.

Businesses have trademarks on their "marks" the moment they start using them actively in commerce, the marks DO NOT need to be registered for them to be considered legal trademarks. As such, generic Google search is by far a better tool than TESS or anything else.

In the end .. generally as long as you're not targeting a business or person, you're probably safe more often than not .. but it really depends on the type of domain(s) in question.

When it comes to trademarks and domains, about 45% of domainers are are overly paranoid .. and another 45% aren't paranoid enough! lol


I HIGHLY suggest you search NamePros for posts by @jberryhill .. he is an IP professional (a very good and informed one). His posts throughout NP are absolute gold and an amazing way to get an initial basic understanding.

Also check out @DomainNameWire for interviews with him as well as @Zak Muscovitch .. both really are great people to learn from.

 

[ThatNameGuy]

Probably no crime in such cases, and you would only lose the domain at worst, and losing one udrp can be used against you in other udrps.

What would be a punishable crime. For example you buy adidasshoes.com and sell fake adidas shoes. Or send emails with adult content from info at adidas.rodeo.

I'm not a lawyer, but just some basic commonsense should be enough in most cases.

I'm not a lawyer either, but I agree with your "commonsense" call. I've found "if" you're to ask 10 lawyers the same question, you'll get 10 different answers....and 10 different bills btw Also, even if commonsense tells you, you should be OK, I'd reach out to the the TM owner who you might have a conflict with, share with them your domain, your business model, your "story", and who knows...they may even want to help you in some capacity?

I have something like this going on with a domain I recently bought that has the word snicker(s) in it, and my reason for creating it and owning it has to do with "laughter", and absolutely nothing to do with the "snicker" candy bar that happens to be the #1 candy bar in the world. The context in which I'm using "snicker" has to do with "health" like; "Laughter is the best Medicine", so I have a very legitimate purpose for it that I plan on sharing with the Mars.com, the candy empire. I think when they hear my story....they may even want to get involved.

I hope this helps the discussion.