discuss Trademark infringement or a smart acquisition?

[Molly]

Hi guys. It sounds like googling a domain name to find potential buyers is a good thing during valuation. When, then, do I have to be concerned about TM infringement? Where is the line between the two? Thanks in advance!

 

[Molly]

Sorry to put you guys on the spot, but I’m hoping you have a chance to chime in. No pressure, of course. The name I’m considering buying is not handreg, if that matters. I have something like ZROX (com) in mind. Or like LYFT (com) if it were available to buy.

@bmugford @Bob Hawkes @Eric Lyon @Sutruk @NameGroove @alcy @Kyle Tully @Daniel Owens @homebuyer @Bravo Mod Team

 

[draco]

It depends on the name. There is no 'one size fits all' answer. You could do a lot with Apple, not so much with Pepsi.

 

[homebuyer]

Hi guys. It sounds like googling a domain name to find potential buyers is a good thing during valuation. When, then, do I have to be concerned about TM infringement? Where is the line between the two? Thanks in advance!

You should do your own research before asking such questions. May I suggest you start with: https://www.namepros.com/search/824811/?q=domaining+for+beginners&o=relevance

 

[Molly]

My bad, sorry.

 

[bmugford]

Sorry to put you guys on the spot, but I’m hoping you have a chance to chime in. No pressure, of course. The name I’m considering buying is not handreg, if that matters. I have something like ZROX (com) in mind. Or like LYFT (com) if it were available to buy.

@bmugford @Bob Hawkes @Eric Lyon @Sutruk @NameGroove @alcy @Kyle Tully @Daniel Owens @homebuyer @Bravo Mod Team

There is really no way to answer. There is not enough info.

It depends...

Brad

 

[Salemnole1]

I actually have the same question but I'll do one better. I purchased KochProducts.com. obviously Koch Industries is a multi billion dollar company. If I were to start an online retail shop would that be infringement? Even if I started clearly I had no relation to Koch industries.

And in regards to a reply above, some people learn better through mentorship than by reading. Just because your not of mentor quality doesn't mean you push people off like that.

 

[bmugford]

I actually have the same question but I'll do one better. I purchased KochProducts.com. obviously Koch Industries is a multi billion dollar company. If I were to start an online retail shop would that be infringement? Even if I started clearly I had no relation to Koch industries.

And in regards to a reply above, some people learn better through mentorship than by reading. Just because your not of mentor quality doesn't mean you push people off like that.

Why Koch?

Is your surname Koch?
Is it a city you are operating in?

If not, why did you choose that?

Brad

 

[Molly]

I actually have the same question but I'll do one better. I purchased KochProducts.com. obviously Koch Industries is a multi billion dollar company. If I were to start an online retail shop would that be infringement? Even if I started clearly I had no relation to Koch industries.

And in regards to a reply above, some people learn better through mentorship than by reading. Just because you’re not of mentor quality doesn't mean you push people off like that.

Thanks, @Salemnole1. I’m no expert, but I think this would be TM infringement unless your business truly has nothing to do with Koch. That would mean no similar products, offerings, etc. This would be true domain name aside, I think.

And as @bmugford may be alluding to, after ensuring you offer nothing related, you may still need to justify the use of Koch at all. But I could be making that last part up, lol.

 

[HotKey]

Hi guys. It sounds like googling a domain name to find potential buyers is a good thing during valuation. When, then, do I have to be concerned about TM infringement? Where is the line between the two? Thanks in advance!

Normally the line between the two is when the name registration infringes on confusion as to:

1) Is the name unique and/or
2) Does your registration match a trademarked name and is associating products/services using it?

 

[Bob Hawkes]

I don't wish to offer a legal opinion, and as others noted since we don't know the name, I think, and don't post it here, hard to say anything specific.

As a general rule, I like to live a low risk life, including low legal risk. There is a huge sea of domain possibilities, so why tread in an area that makes you pause to ask if there might be problems?

In case not already read about it, the third article in my Basics series has a brief rundown of the 3 elements that all must be proven in a UDRP.
https://www.namepros.com/blog/domai...otion-udrp-parking-website-resources.1254523/

Note that if you reach out to a company that owns a TM that is the same as the offered domain name, that is generally (details matter!) considered meeting 1 of the 3 requirements (bad faith). Therefore, be very careful when doing outbound, or when having others do outbound on your behalf with names.

-Bob

 

[Molly]

I don't wish to offer a legal opinion, and as others noted since we don't know the name, I think, and don't post it here, hard to say anything specific.

As a general rule, I like to live a low risk life, including low legal risk. There is a huge sea of domain possibilities, so why tread in an area that makes you pause to ask if there might be problems?

In case not already read about it, the third article in my Basics series has a brief rundown of the 3 elements that all must be proven in a UDRP.
https://www.namepros.com/blog/domai...otion-udrp-parking-website-resources.1254523/

Note that if you reach out to a company that owns a TM that is the same as the offered domain name, that is generally (details matter!) considered meeting 1 of the 3 requirements (bad faith). Therefore, be very careful when doing outbound, or when having others do outbound on your behalf with names.

-Bob

Super helpful, @Bob Hawkes — as always. And I will review that link. Many thanks!

 

[jberryhill]

Note that if you reach out to a company that owns a TM that is the same as the offered domain name, that is generally (details matter!) considered meeting 1 of the 3 requirements (bad faith). Therefore, be very careful when doing outbound, or when having others do outbound on your behalf with names.

Outbound-Induced UDRP's:

Royal Caribbean Cruises, Ltd. v. James Booth, BQDN.com
WIPO Case No. D2019-1042
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-1042

The Panel is inclined to favor the Respondent’s case on registration in bad faith, despite the approach of the Respondent’s broker which has at least an appearance of being specifically targeted to the Complainant and its rights. In other circumstances, the nature of such approach might have irrevocably tainted the Respondent’s protestations that it acquired the disputed domain name in good faith. However, on the facts before it, the Panel accepts that the Respondent more probably than not acquired the disputed domain name due to its value as a short, ubiquitous and memorable three-letter string which would be attractive to a wide variety of existing and potential entrants to the marketplace rather than in a bad faith attempt to target one specific rights owner in the form of the Complainant. To a considerable degree, this turns on the limited extent of the uniqueness and fame or well-known nature of the initialism contended for by the Complainant when compared with other actual or possible uses.

The Respondent’s evidence of the ubiquity of the initials “RCC” is compelling and undoubtedly outweighs the Complainant’s evidence relating to the strength of its RCCL initialism. This is not a case where the three letters in question conjure up a particular famous mark in the minds of most people such that knowledge and targeting could reasonably be inferred at the point of registration....

Picture Organic Clothing v. James Booth
WIPO Case No. D2020-2016
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-2016

Complainant’s contention of bad faith registration and use is based solely on a current attempt by Respondent to sell the disputed domain name and Respondent’s lack of use of the disputed domain name for anything else. Such contention, though, ignores the fact that the disputed domain name fully and solely consists of the dictionary term “picture.” The mere act of buying and selling a domain name that fully and solely consists of a dictionary word that may also function as a trademark in connection with certain goods and services does not in and of itself establish bad faith. A domain name that solely and fully consists of a dictionary word likely has an inherent value as a generic domain name that potentially can be exploited legitimately by a registrant as long as it is not done to take advantage of, or to exploit, the trademark rights of another party in the same term. It is thus incumbent on Complainant to provide evidence showing that Respondent registered and is using the disputed domain name not because Respondent did so on account of its generic value, but did so to take advantage of Complainant’s rights in the PICTURE name and mark. Complainant, however, has failed to meet this burden on two grounds.

The Chancellor, Masters and Scholars of the University of Cambridge v. Kirkland Holdings LLC
WIPO Case No. D2015-1278
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1278

The Complainant informs the Panel that the Respondent’s sales representative made contact with the Complainant, which was then attempting to purchase the disputed domain name, and also offers the disputed domain name for sale on its website at the minimum asking price of USD 750,000. The Complainant thus concludes that the Respondent acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

[...]

As to the offer for sale made to the Complainant by a broker entrusted by the Respondent, the Respondent claims that the Complainant was only one of the possible interested parties contacted by the broker and that, therefore, the Complainant was not specifically targeted by the Respondent.

[...]

Fourthly, the Respondent could also demonstrate that there is an economic rationale underlying the offer for a possible transfer of the disputed domain name to a third party. Indeed, whereas the term “Cambridge” refers to different and relevant geographical locations, it is plausible that there may be other market players potentially interested in acquiring the disputed domain name. The consequence of this competition for the disputed domain name is the elevation of the price of its transfer.

It sounds like googling a domain name to find potential buyers is a good thing during valuation.

It's also a great way to find out whether those Google results show:

(a) the search results are dominated by a single entity's products/services or third party references to that entity; or

(b) the search results are a mix of different entities using the term either (i) for a common generic or descriptive meaning or (ii) for different things, with no one in particular dominating the first N results.

Situation (a) suggests you may have a distinctive trademark on your hands. Situation (b) suggests the type of situation described in the UDRP decisions linked above.

In each of the UDRP decisions linked above, the domain names - RCC, PICTURE, CAMBRIDGE - were terms that might be of legitimate interest to all sorts of entities, including entities which might incidentally have specific rights in a trademark. Accordingly, when the broker conducted outbound communications, the broker sent the communications to a whole roster of potentially interested entities.

One thing I've been advising brokers to do in these situations is to make sure that, whatever they send, their communication mentions that the domain name is being offered to many potentially interested parties. This not only avoids the recipient thinking they were uniquely targeted, but it is also a basic sales technique to create urgency.

The other important thing in any sales communication is DO NOT SAY THINGS WHICH ARE NOT TRUE. Your sales communication is going to be complainant's Exhibit A in their UDRP complaint. Saying things which are exaggerated or provably false is not going to make you any more believable if a dispute erupts.

 

[Bob Hawkes]

Thanks as always for your incredibly helpful and informative response @jberryhill – the domain community, and NamePros in particular, is so fortunate to have you as an active member.

The following is such important advice for those doing outbound, on their own or through a broker.

One thing I've been advising brokers to do in these situations is to make sure that, whatever they send, their communication mentions that the domain name is being offered to many potentially interested parties. This not only avoids the recipient thinking they were uniquely targeted, but it is also a basic sales technique to create urgency.

-Bob

 

[Molly]

I’m with @Bob Hawkes; super helpful. Thanks, @jberryhill!