Trademark Infringement Notice for a Parked Domain?!?

[TestCase]

As Roseanne Rosanadana was oft to say, "It's always something..."

This has just not been a very good holiday season. Along with many other things including finding out someone has recently TM'ed a domain I've had for about 2 years, I just received a Trademark Infringement Notice for a domain name that is parked. HUH?!?!?...

The domain name itself is fine and is parked. It's the fact that this group's trademark is appearing as part of one of the links generated on the main page.

Any suggestions on what my course of action/response should be?

 

[Ronald Regging]

It almost sounds like you are saying that the domain itself has nothing to do with the company or any of its TMs, but they are contacting you about the links displayed on your parked page? This doesn't make any sense though, so I'm assuming that the domain itself is a TM of the company.

Having a domain parked isn't full-proof. If you own a domain that is similar to a TM held by a company, you have to ensure that none of the ads are displaying for their company or TM, competing products/services, or generally anything to do with the industry they are in.

 

[TestCase]

The domain name itself is fine and is parked. It's the fact that this group's trademark is appearing as part of one of the links generated on the main page.

The domain name is 100% generic, the issue is with one of the links on the landing page. The link contains this group's TM and is something I have no control over as it is provided by the parking company.

 

[DNQuest.com]

The domain name is 100% generic,

According to whom? Windows, Cheer, Champion all have registered marks.

the issue is with one of the links on the landing page. The link contains this group's TM and is something I have no control over as it is provided by the parking company.

No control? did someone hold a gun to your head to put up the landing page? You did have some control. Many companies do let you edit teh content show on the landing page.

Is the alleged TM, you say it registered recently, but was it used in commerce prior to the registration?

Just some htoughts.

 

[matt_bodis]

His domain name is completely generic. I have talked to TestCase over pm. I mean, VERY generic. It has nothing to do with the brand. Their link is appearing on the landing page and they have wrote TestCase a TM infringement letter.

I would have to say that they cannot do anything about it. Especially when many of these links are generated directly from our upstream ad provider. There is really nothing that stops anyone from putting links with the trademark name in it on a non-trademark and completely generic domain name.

It's as if you'd have getautoinsurance.info, and Geico would say that you are infringing on their rights because there is a "Geico" text link on your website. I just don't think what they are claiming to be an infringement makes any sense, but I am not a lawyer so I could be wrong.

 

[TestCase]

Is the alleged TM, you say it registered recently, but was it used in commerce prior to the registration?

No, it is not the "alleged TM" under discussion in another thread. This is a completely different domain.

No control? did someone hold a gun to your head to put up the landing page?

No they didn't DNQuest, and that is a pretty immature and sarcastic question. I came here for a little advice not to be insulted.

The reason I spend my time at NamePros as opposed to places such as DNF is because of the positive attitudes generally seen around here. As such I would prefer that you, DNQuest, not respond to any of my future posts if you aren't going to be able to contribute something useful to the issue under discussion or posit your "questions" or advice in a more positive manner.

 

[kiore]

I've had a similar situation with a domain I have parked.

One of the subcategories was something they had trademarked. Luckily the domain was with NameDrive & they have a facility to block individual "search terms" so I was able to resolve it to everyone's satisfaction fairly easily. If your parking provider doesn't support this you might want to consider moving to one that does.

If it's individual ads, you aren't creating the ads, you have simply leased your domain name to an advertising company. You need to refer them to the supplier of the adverts. Presumably Google has a contact address the C&D letter can be sent to.

 

[fxtrader28]

No, it is not the "alleged TM" under discussion in another thread. This is a completely different domain.


No they didn't DNQuest, and that is a pretty immature and sarcastic question. I came here for a little advice not to be insulted.

The reason I spend my time at NamePros as opposed to places such as DNF is because of the positive attitudes generally seen around here. As such I would prefer that you, DNQuest, not respond to any of my future posts if you aren't going to be able to contribute something useful to the issue under discussion or posit your "questions" or advice in a more positive manner.

I must agree with you that DNQuest has a very negative attitude when i had a problem similar to yours and i asked for some advice.

 

[TestCase]

Thanks for the input, Kiore. Matt and I are both looking at the issue and how it might be resolved in a positive fashion for all parties.

I've had a similar situation with a domain I have parked.

One of the subcategories was something they had trademarked. Luckily the domain was with NameDrive & they have a facility to block individual "search terms" so I was able to resolve it to everyone's satisfaction fairly easily. If your parking provider doesn't support this you might want to consider moving to one that does.

If it's individual ads, you aren't creating the ads, you have simply leased your domain name to an advertising company. You need to refer them to the supplier of the adverts. Presumably Google has a contact address the C&D letter can be sent to.

 

[Dave_Z]

It's the fact that this group's trademark is appearing as part of one of the links generated on the main page.

Is one of those links going to the trademark holder's site itself?

While DNQuest's post came off as rather harsh, one thing to consider is if you
indeed don't have control over what "kinds" of ads to filter and what not. You
can ask the parking provider if you have that option in your account with 'em
as kiore said.

But since you already received a C&D from a trademark holder, the really only
sensible suggestion I can give is you talk to a licensed lawyer with real-world
experience in this sort of thing. Use the thread on lawyers to give you a head
start.

 

[Ronald Regging]

It almost sounds like you are saying that the domain itself has nothing to do with the company or any of its TMs, but they are contacting you about the links displayed on your parked page? This doesn't make any sense though, so I'm assuming that the domain itself is a TM of the company.

I guess my initial gut feeling about this was right, but it still doesn't make any sense. Seems ludicrous for a company to come at you in this situation. They may even be the ones paying for the advertising and not even realize that is the reason it's displaying on your site There is a lot of complaints going around about other people advertising through Adsense etc, using TM terms though. But I think this is something they should be addressing with Google directly, not its individual publishers... As a publisher, you have no way to know who the advertisers are.

 

[Kate]

No they didn't DNQuest, and that is a pretty immature and sarcastic question. I came here for a little advice not to be insulted. ...

Do not take offense.
Even if your name is truly generic, usage does matter.
If you park a name, even setting the keywords carefully certain sponsored links can still result in a TM infringement.
Now the line of defense from the suing party will be that you are making money on the disputed ads (even though this is not intentional and you might not even realize, but it still does not exonerate you from any responsibility).
Obviously you don't have total control over which ads are being served. Bottom line: you need to be careful. There are risks in parking that do not seem to be understood by domainers.

 

[labrocca]

Don't mess with Phil. Sarcasm aside he gave you straight up advice. Simply because you don't like it doesn't mean he is wrong. You claim you don't have control over the parked page but that's not true. If you want to be mature here and get mature responses then act with some intelligence.

The link contains this group's TM and is something I have no control over as it is provided by the parking company.

Obviously if you placed some thought into what you typed you would realize how baseless your argument is in law. Ignorance doesn't excuse you. Placing a domain at a parking service doesn't exculpate you.

Can you also explain this "Trademark Infringement Notice" you recieved? Is it from the parking company? Is it a C&D? What does the notice require from you?

There is an assumption that if you own a domain before X TM is active that you can do whatever you want with it. That's just not so. IF you own XXXX.com and park it for 5 years...then a service comes up with that name and now there are suddenly infringing links on your domain you are infringing. It doesn't matter that you owned the domain years ahead of the TM. The fact is that right now...you are using it in a manner that infringes on a current mark.

Let's say the domain is fruittree.com and the new mark is FruitTree.net and they do bubble gum. Well did fruittree.com show bubble gum ads BEFORE Fruittree.net gained in popularity? Does it show bubble gum ads now? If it does then it's infringing and no amount of "oh but I have no control" will get you out of that.

This seems the case here.

 

[Ronald Regging]

There is an assumption that if you own a domain before X TM is active that you can do whatever you want with it. That's just not so. IF you own XXXX.com and park it for 5 years...then a service comes up with that name and now there are suddenly infringing links on your domain you are infringing. It doesn't matter that you owned the domain years ahead of the TM. The fact is that right now...you are using it in a manner that infringes on a current mark.

I think maybe we aren't seeing this in the right light, as it has been confusing from the start. From what I gathered, this isn't a typical case of TM violation through parking as we've seen a hundred times or more in here before. Yes, if you own a domain that has potential TM implications, it is your responsibility to ensure that the ads appearing do not infringe.

I dont think thats the case here, I think in this situation the domain itself has absolutely nothing to do with any TM involved. Lets assume that there is no TM violation with the domain and that the owner of the TM is coming at him solely for the fact that their TM is appearing in an ad on his site. In the example given, he owns a domain like AutoInsurance.com and Geico is coming after him because there is an ad on his site for Geico...

Obviously in this example his domain is generic and is not in and of itself violating any TMs... So the real issue becomes the ads themselves, irrespective of the actual domain.

As I mentioned, there is a lot of contention in the air when it comes to PPC advertising where competitors or affiliates will advertise on a TM keyword in order to redirect search traffic intended for the original TM holder. However, as a publisher, you have no way of knowing who the actual advertiser is. If I see an ad for Geico on my site, how do I know whether that spot was actually paid for by Geico, a competitor, or an affiliate of either? Last time I checked, Google doesn't send me a itemized listing of the ads appearing on my site, along with full details on the advertisers for those specific ads.

Now I am not saying that there is no wrongdoing in this whole scenario, because at the heart of the matter, someone is profiting off of a company's TM. However, I think blaming the publisher in this scenario is wrong and I am not certain that the liability lies with them at all. The real responsibility lies with Google or whatever ad network it happens to be. It is their responsibility to ensure that their advertisers are not infringing on established TMs.

Again, I am assuming that this scenario is not like the typical cases we see everyday in here and that the real issue is not about the domain. I may be wrong, but thats what I'm getting from this.

And if this is the case, where TM holders are now coming after owners of completely generic domains, due to the ads being served, I think it's going to have some far-reaching impact on domainers.

 

[TestCase]

Congratulations RR/Herb!!! You are the only one that seems to have a correct grasp of my problem as well as to possible future problems with domain parking in general.

OK guys & girls, seeing as there is some confusion -- including some that seem to think that this may be related to my posting in another thread (it is not) -- let's try this one more time.

The domain name itself is not in question. The issue is that there was a link on the primary landing page that used this groups TM in it. (The domain is now parked elsewhere.)

As Matt said in his post, it would be the equivalent of having the domain name "getautoinsurance.info" parked and having the parking service's system auto-generate a link on it that says "Geico Car Insurance" because it is a related search term to "auto insurance".

My current problem is one that I had never heard of nor considered. And even if I had, odds are I still would have believed/assumed/trusted that the parking service and it's ad provider have systems in place to avoid such issues. (OK, call me naive...) And before anyone points it out, I am fully aware that ignorance is not necessarily a defense when it come to legal matters.

As to the issue of "control", I was using it in a global sense. Do each and every one of you monitor each and every one of your parked domain's ads and links to make sure that each and every one of them is not infringing on anyone's TM??? I'm going to go out on a limb and guess the answer is pretty much NO!

I wonder how many of us have actually even considered that a TM issue might come up with a purely generic domain that is parked or asked their parking provider(s) about possible TM issues and/or safeguards.

I'm not looking to get in a pi**ing contest with anyone or asking about my legal culpability or lack there of in this issue. What I am looking for are some suggestions as to how best respond to the issue at hand. End of story...

Can you also explain this "Trademark Infringement Notice" you recieved?

It has recently come to our attention that your establishment has been misusing the "ABCXYZ" trademark to attract... persons to your business. Specifically, your company is using the "ABCXYZ" mark on its website referenced above. A copy of the infringement is attached. Your use of the "ABCXYZ" trademark creates the false impression that "ABCXYZ" endorses your services.

"ABCXYZ" owns and has used, since 19XX, the "ABCXYZ" trademark and service mark for a number of goods and services including... services and other goods and services directed primarily to... persons. "ABCXYZ" has also registered the "ABCXYZ" mark, alone and in combination with other words, with the United States Patent and Trademark Office. "ABCXYZ" thus demands that you, your company, and any other person or business acting in concert with you:

(1) permanently and immediately cease and desist all use of the mark "ABCXYZ" and any other confusingly similar marks, alone or in combination with any other word(s), term(s), symbol(s) and/or design(s), as well as all false and misleading statements that lead consumers to believe that your company is connected with or endorsed or approved by "ABCXYZ" , or that "ABCXYZ" has endorsed any product or service that you promote;

(2) provide the name of the company that created the website;

(3) provide to us a list of all newspapers, periodicals, and direct mailers in which you have used the "ABCXYZ" mark; and

(4) provide an accounting of the monies that your company has spent on advertising and promotion using the "ABCXYZ" mark.

Because “ "ABCXYZ" ” is a registered mark of "ABCXYZ" , it may only be used with permission. For this as well as other reasons, "ABCXYZ" carefully controls and monitors the use of its name.

"ABCXYZ" takes this matter very seriously. Please respond only in writing to "ABCXYZ"issue@"ABCXYZ".xxx or via facsimile to 555-555-5555. Telephone calls will not be accepted or returned. If you do not provide a written response within five (5) business days from the date of this letter, we may institute litigation against your company without further notice.

We look forward to a prompt and favorable response.

Sincerely,

"ABCXYZ"'s Attorney

 

[kiore]

TM. However, I think blaming the publisher in this scenario is wrong and I am not certain that the liability lies with them at all. The real responsibility lies with Google or whatever ad network it happens to be. It is their responsibility to ensure that their advertisers are not infringing on established TMs.

I think this is a nasty problem.

For Adsense, Google refers to the domain owners as "Publishers". I think the term is also used for parked domains, but there's a world of difference between the so-called publisher in the web world and in the traditional paper or broadcast world.

In the traditional advertising world, the publisher reviews and either accepts or declines the adverts from the advertiser. In the on-line world, especially with the small domain owner, the domain owner does not have the opportunity to review the ads before they are published. The normal practice is that they don't have the option to select or decline individual adverts even after they are first published.

The role of a domain owner, especially the small domain owner, is more like the owner of a piece of land on which Oggi have erected a billboard. Sure the owner permitted the erection of the billboard & are paid a rent for the use of their land, but Oggi & Oggi alone determine which ads are shown on it. They are the publisher, as they have the ability to review ads before they are placed.

If a trademark violating ad is shown on a billboard, is the landowner sued, or is Oggi sued?

Why should domain owners be different to land owners in this respect?

 

[TestCase]

Is one of those links going to the trademark holder's site itself?

No, that's the problem. It is one of the "categories" auto-generated by the parking system. Whether the ads shown on the click-through page actually were for providers of this groups services I don't know, As soon as I received the email I pointed the domain to another parking program. Once the dns had changed, I refreshed the new page about 30 times to ensure that there were no TM's being used by anyone except actual TM holders.

But then again this "clear" situation could change in the future if some non-TM group decides to run ads that includes a TM.

Obviously you don't have total control over which ads are being served. Bottom line: you need to be careful. There are risks in parking that do not seem to be understood by domainers.

Lesson learned and duly noted...

 

[DNQuest.com]

testcase, where you see insult, I see straight forward thinking from the TM holder. "did someone hold a gun to your head?", how is this an insult? You stated you had no control, that would be the only way for which you have no control. You did have control and you chose to park it. All I did was ask the question. But as you can see, it provoked discussion and hopefully brought clarity.

That aside, the followng is very confusing:

His domain name is completely generic. I have talked to TestCase over pm. I mean, VERY generic. It has nothing to do with the brand. Their link is appearing on the landing page and they have wrote TestCase a TM infringement letter.

Here is the problem I see, almost everything has a TM... Windows, Cheer, Champion, Apple (twice). These are all generics words, but bet you bottom dollar you can get in trouble if you use them in violation TM law. Domainers say the term "generic" and think they know what they are talking about. Maybe a better word would be "descriptive". "Getautoinsurance.com" would be a descriptive domain. If they are saying that their ads are showing up on a descriptive domain, they may not have legal rights to complain. You are offering something that offers what it says. Separate the dictionary meaning from domains.

As to the issue of "control", I was using it in a global sense. Do each and every one of you monitor each and every one of your parked domain's ads and links to make sure that each and every one of them is not infringing on anyone's TM??? I'm going to go out on a limb and guess the answer is pretty much NO!

Many people do monitor their domains, the ones that don't could find themselves in hot water. Domaining is more than registering names and parking them. Yes, you are required that the domains do not violate TOS or TMs.

 

[jberryhill]

From what I can gather, either the question hasn't been asked very clearly, and it certainly hasn't been understood.

I guessing here - but I understand that the letter doesn't relate to the relationship between the domain name and the advertising; but that instead the complaint relates to one of the advertisements in particular.

For example, if you had perfume.com, it would be perfectly fine for some retailer selling Chanel perfume to put an ad into the PPC system for his store. But what I gather you to be saying is that the TM owner is complaining that one of the PPC advertisers is an infringer.

In that situation, what Labrocca and DNQuest are saying is as wrong as it is irrelevant. Publishers - whether they be newspaper publishers, magazine publishers, or web page publishers - are protected against liability from trademark infringement by their advertisers under 15 USC 1114(2)(B). In other words, if I am a trademark infringer and I advertise in your newspaper, you cannot be held liable for my infringement. The best that the TM owner could do is to get an injunction against further publication of that advertisement in your newspaper.

Now, if the situation is what Labrocca and DNQuest are responding to, which is a different kettle of fish, then the situation still is not as absolute as they are making it out to be.

http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1275.html

There is no evidence in the record that casts doubt on the Respondent’s claim that the advertising links are served automatically by a third-party advertising feed provider using keyword search techniques rather than human selection. The automated advertising feed arrangements are such that it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute. In the face of the Respondent’s denials and the automated nature of the advertising links, the Panel considers these particular links insufficient to prove the Respondent’s intent to mislead Internet users by means of the Domain Name itself.

In short, the Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words.


http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0241.html

Before he became aware of the Complainant’s mark, the Respondent used the domain name in relation to the provision of information about elephants, coupled with advertising unrelated to the Complainant’s business, designed to generate revenue. Subsequently but still prior to his becoming aware of the Complainant’s mark, some of the advertisements displayed on the Respondent’s website were for insurance offered by U.K. companies, being competitors of the Complainant. There have been similar insurance advertisements on the website following the filing of the Complaint.

The Panel considers that the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy. It is unnecessary to decide whether this is so irrespective of whether a respondent knows of a complainant’s mark prior to acquiring the domain name because here the Panel has found the Respondent had no such knowledge.

In the absence of such knowledge, the additional factor of the display of advertisements, including insurance advertisements, does not change the legitimate character of the Respondent’s activity.

It is unnecessary to decide whether any intentional display by the Respondent of insurance advertisements on his website after becoming aware of the Complainant’s mark could render illegitimate that which was previously legitimate because the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them and that the Respondent cannot be aware of their content as displayed in any particular country.

In Experimental Aircraft Association (EAA) v. EAA.COM, NAF Case No. FA0310000206309, the Panel found that the brief appearance of aviation links on the respondent’s web sites was automatically provided by a pay-per-click search engine provider and was not intended by the respondent. Since there was no evidence that the respondent’s business was in connection with aviation, the respondent had no duty to be aware of the complainant’s mark. Those findings are applicable here.

 

[Ernest]

Do not worry about it the must write not for you but for your parking company .
You can write what domain parked width parking company and you are not responsible for parking company content , and what they must contact the parking company but not you , if you want write me domain and tm of the company who send you information what you braking tm law.