Trademark on gTLD domains

[Apprich]

hi,

Recently registered bunch of .xyz domains from uniregistry, just right after 3 days of my registration received trademark claim email from trademark consultant company. Saying that domain.xyz is identical match of the brand of company who is holding .com .net .org that they are giving service. Email is below.


"We are hereby contacting you in name and behalf of XXX company holder among others of the following trademarks registered and in force

Being yourself, xxx my name, as the inscribed holder of the domain name we hereby let you know that containing the registered trademark XXX domain and making a false reference to the unity of business of the entity entitled of the brands that this defines and promotes according to the annex II, it is a unfair registration and use capable to origin an unfair profit of the reputation of the brand XXX domain reputed in Spain.

Particularly the domain name results to be identical up to the point of creating confusion in respect of a number of trademark registrations of goods and services over which our clients have demonstrated to have legal rights , the registration and use of this domain name counterfaiths the Uniform policy for solution of controversies in relation to domain names approved by the ICAAN on date October 24 1999 in the paragraph 4a) i) as well as its regulation paragraphs 3b) viii) b) ix) i)

This violation allows mi client to prosecute against you the corresponding suit claim before the Centre of mediation and Arbitration of OMPI.

For these moments we take the liberty to address you the present claim requesting you that in a maximum deadline of 10 natural days you consent to apply for an voluntary abandonment application before your registrar and to stop in the use by any means of the denomination XXX or any other similar that may give rise to confusion or association.

Please note that in case this should be ignored by you , our client will make use , without the necessity of any previous letter or notice of the pertinent legal actions for the resolution of the dispute in domain name field , as well as the possible civil and penal actions established by the specific ruling. "


my
1st question how they get notified immediately that i registered their TM domain?
2nd question what is the worst consequences of this claim?if they apply WIPO they get domain from me. anything else?

 

[jberryhill]

1st question how they get notified immediately that i registered their TM domain?

Because there are trademark service companies which monitor the TLD zone files and get instant or batch reports of identical or similar domain names.

2nd question what is the worst consequences of this claim?if they apply WIPO they get domain from me. anything else?

If their claim is valid, and if you are subject to suit in the US, then they could file a lawsuit against you seeking up to $100,000 in statutory damages in the court's discretion.

 

[Apprich]

Because there are trademark service companies which monitor the TLD zone files and get instant or batch reports of identical or similar domain names.

If their claim is valid, and if you are subject to suit in the US, then they could file a lawsuit against you seeking up to $100,000 in statutory damages in the court's discretion.

If not suit the US? any consequences? do trademark service companies take advantage of this law to sue $100,000 from domainers and people ? how can we defend ourselves? it could be many of us accidentally register trademark domain..

 

[golan]

how can we defend ourselves?

We can't, if that really is TM.

it could be many of us accidentally register trademark domain..

No, we always check names for TM before regging domains.

 

[tiawalling]

I got a similar email for a .company domain name I regged yesterday.
I regged a name.company, let say john.
So I regged john.company and they have tmed john love company.
And I'm in India and they are a U.S company.
Do I still have a chance of keeping my domain?

 

[Apprich]

We can't, if that really is TM.
No, we always check names for TM before regging domains.

Well, you are domainer, true we should always check TM. In mass domain buyout times many of us registered hundreds of domains in hurry. But that's not an excuse yeah ok, how about ordinary person register TM domain without knowing there is TM on it?

 

[golan]

Well, you are domainer, true we should always check TM. In mass domain buyout times many of us registered hundreds of domains in hurry. But that's not an excuse yeah ok, how about ordinary person register TM domain without knowing there is TM on it?

With an ordinary person, this is harder, of course. You asked "many of us", so i replied in this way ))

 

[jberryhill]

how about ordinary person register TM domain without knowing there is TM on it?

Well, it would seem that you have received a notice which is either (a) bogus, or (b) worth confirming to see if anything in it is true. That might be a good start.

 

[Dotword]

With the caveat that I am not a lawyer ...

A key point is whether you bought the domain in "bad faith".

If you bought AAA.xyz and planned to sell to a company called AAA (or a company that owned the trademark AAA) then that is bad faith and they could file against you (and that's where the $100,000 could kick in).

Maybe you know this but from my understanding there can be two companies with the same name (or same operating name) as long as they cause no confusion to customers. This usually means they operate in different industries.

So you could have a company called AAA who build houses and a different company called AAA who bakes bread. And if you started AAA to bake bread (and they build houses) then you can co-exist and why shouldn't you have a domain name that reflects your company name.

But (there is always a but) if AAA is a global brand then it could easily be seen as causing confusion so for example you are likely to have problems starting a bread baking company called Nike.

 

[Apprich]

With the caveat that I am not a lawyer ...

A key point is whether you bought the domain in "bad faith".

If you bought AAA.xyz and planned to sell to a company called AAA (or a company that owned the trademark AAA) then that is bad faith and they could file against you (and that's where the $100,000 could kick in).

Maybe you know this but from my understanding there can be two companies with the same name (or same operating name) as long as they cause no confusion to customers. This usually means they operate in different industries.

So you could have a company called AAA who build houses and a different company called AAA who bakes bread. And if you started AAA to bake bread (and they build houses) then you can co-exist and why shouldn't you have a domain name that reflects your company name.

But (there is always a but) if AAA is a global brand then it could easily be seen as causing confusion so for example you are likely to have problems starting a bread baking company called Nike.

Hi, thank you for your response. This is exactly i am trying understand.
OK i think neither domainer nor ordinary person would establish bread baking company called Nike.. I will skip this extreme example.
Here is the case, and this could be most common case you, me or any ordinary person would face.

Example:
You, me, or any ordinary person go and register some domain called AAAAA which is not global brand, and it's just local brand in some country.. I mean this is highly possible case imagine that most of the western countries use pronounceable words AAAAA or some type of words as their brands.
And Immediately right after your registration, you receive TM claim from TM consultant company saying that your registration is against TM law and saying that you should drop the name in 10 days. So what now?

a) I have not even established any business on domain AAAAA yet to be competitor to TM owner. I could be just in the idea phase of my business and i may establish some business which is not related to TM owner business. or Can i?

b) Let's say i will not establish business can i just hold this domain without doing anything? why i need to drop it or hand over to them?

c) If they really care about such TM brand in some gtld why they don't buy it before i register it? But aha here comes the big question there are 1000 gtld extension would companies be able to reg all their brand in their TM name?

Obviously most of us will face this kind of problems with gtlds.. Because most of the gtlds are either sold in premium prices or they are TM names, so what is left to domainer in the end? just crap imho..

Let's see problem here, i really think it's not fair that TM owner ask to domainer to drop TM domain when they don't register them or registrars allows people to be able to register TM names. Or would you drop such domain after you register? what law says? what would you do? please share your ideas..

 

[Dotword]

It is possible they have no real grounds to ask you to release it. What is the evidence that they have the right?.

Is the domain a word? Does that company only operate in Spain? Does the domain only make sense in Spain?

Does anyone else have experience of what happens after one of these "strong arm" emails that are designed to frighten an owner into releasing a domain?

 

[Apprich]

It is possible they have no real grounds to ask you to release it. What is the evidence that they have the right?.

Is the domain a word? Does that company only operate in Spain? Does the domain only make sense in Spain?

Does anyone else have experience of what happens after one of these "strong arm" emails that are designed to frighten an owner into releasing a domain?

Well, email clearly indicates that they have AAAAA company in Spain with established business and website holding TM in several class 16,36,38,44 and they have domain in other extensions.

AAAAA.COM
AAAAA.NET
AAAAA.ORG
AAAAA.INFO
AAAAA.ES
AAAAA.EU
AAAAA.MOBI

So, I registered AAAAA.xyz does this mean I have to drop domain even i don't do anything with it?

 

[Dotword]

I know of no hard and fast rules like that. AFAIK it comes down to intent and bad faith.

I don't see mention of the TM classes in your original post but the implication of course is the TM does not apply outside the given classes. May depend if they can claim common TM due to being well-known.

Listen to domainsherpa.com/howard-neu-udrp-interview **. It is long but listening to sections at 13:00 and 50:00 should convince you to listen to more.

This may be useful too: keytlaw.com/netlaw/domain-name-dispute-faq/

I assume you have read the UDRP and the ACPA.

• UDRP : icann.org/resources/pages/policy-2012-02-25-en
• ACPA : cybertelecom.org/dns/acpa.htm

The email is clearly aimed at making you give up the domain name at low-cost to them. If they had made a polite request for a price then maybe you would think your luck was in (when discovering they had so many other domains in that name). Seems to me these emails could be a good tactic to soften up a seller.

@jberryhill is a long-term member of this forum so you should start by following his advice. Check the validity of the claim.

I would look into the trademark consultant company. Are they legit? There are typos/grammar issues with the email. Do they have a history of this? etc

** Sorry but my account does not currently allow me to embed hyperlinks.

 

[techname]

If you aren't using the name in bad faith, then I don't believe they have grounds to demand the name from you or file UDRP proceedings.
Like others have mentioned, companies can use identical names provided that they are in sufficiently different industries or businesses and there is no customer confusion.


What types of disputes are covered by the UDRP Administrative Procedure?

According to Paragraph 4(a) of the UDRP Policy, the UDRP Administrative Procedure is only available for disputes concerning an alleged abusive registration of a domain name; that is, which meet the following criteria:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith

http://www.wipo.int/amc/en/domains/guide/#a1

 

[jberryhill]

Maybe you know this but from my understanding there can be two companies with the same name (or same operating name) as long as they cause no confusion to customers. This usually means they operate in different industries.

Generally true. HOWEVER, one of the common misconceptions of domainers is that all trademarks are created equal. They are not.

You implicitly touched on what is generally known as "fame" in your further remarks.

Some marks are more well-known than others, or are inherently distinctive. On "inherent distinctiveness", take Apple and Microsoft. Apple is a very well known computer company, but the word "apple" can of course still be used for apples. Microsoft is in a different class of marks called "inherently distinctive". There is nothing else which is a "Microsoft". The term "Microsoft" means one, and only one, thing in the entire universe - i.e. the computer company in Washington. So if you are in the market and you see a sign over a display of apples that says "Apple", you wouldn't think these are computerized fruit. If you saw a sign over a display of bananas that said "Microsoft", you'd think "Gee, when did they get into the fruit business?"

For famous or inherently distinctive marks, it doesn't matter what goods or services the term is used on. If you are selling shoes called "Coca-Cola", then people are going to think that Coca-Cola has gotten into the shoe business. If you register a domain name like Coca-Cola.xyz, then nobody is going to give a shit about whether you have some "good faith" excuse - it's a famous brand and there is no conceivable "good faith" explanation for it. We all know why you picked "Coca-Cola".

But, sure, a domain name like "United.xyz" - might be an airline, might be a religious sect, might be fans of the Manchester United soccer team... you don't know why the person registered it, so you will want to look deeper into how they are using the name and what sort of behavior they've been engaging in.

If you aren't using the name in bad faith, then I don't believe they have grounds to demand the name from you or file UDRP proceedings.

Okay, so someone has registered Coca-Cola.xyz. If that was everything you knew about the situation, what would you guess?

You'll sometimes see a UDRP panel refer to circumstances where there is "no conceivable good faith use", and Coca-Cola.xyz is a good example of that. There isn't any commercial use for that domain name which is going to be "okay". There just isn't.

Well, email clearly indicates that they have AAAAA company in Spain with established business and website holding TM in several class 16,36,38,44 and they have domain in other extensions.

What is the domain name doing? Is it parked? Do the PPC results on the parking page have anything to do with their products?

Is the domain name otherwise a common word? Apart from their goods/services under the Spanish mark, do lots of people use AAAAA for lots of other things?

How big is this company? Are they well known around the world, or do they do a limited regional business in Spain? Do you live in Spain? Have you ever been to Spain, or do you kinda like the music?

What is their Google rank like? If I search AAAA then do I get a lot of top results five pages deep which are all about them? Or do I get a million results where they rank something like 4,872?

Folks, you have to get out of the "simple answers to simple questions" thinking on this kind of thing.

In a dispute situation, answers to the questions above, and a whole lot more like them, are on the table. The entire factual circumstances go into figuring out whether it is more or less likely that this person registered this domain name for purposes having to do with the claimant's trademark or not.

 

[Dotword]

Hi @Apprich - do you have any updates on this?

 

[platey]

hi,

Recently registered bunch of .xyz domains from uniregistry, just right after 3 days of my registration received trademark claim email from trademark consultant company. Saying that domain.xyz is identical match of the brand of company who is holding .com .net .org that they are giving service. Email is below.


"We are hereby contacting you in name and behalf of XXX company holder among others of the following trademarks registered and in force

Being yourself, xxx my name, as the inscribed holder of the domain name we hereby let you know that containing the registered trademark XXX domain and making a false reference to the unity of business of the entity entitled of the brands that this defines and promotes according to the annex II, it is a unfair registration and use capable to origin an unfair profit of the reputation of the brand XXX domain reputed in Spain.

Particularly the domain name results to be identical up to the point of creating confusion in respect of a number of trademark registrations of goods and services over which our clients have demonstrated to have legal rights , the registration and use of this domain name counterfaiths the Uniform policy for solution of controversies in relation to domain names approved by the ICAAN on date October 24 1999 in the paragraph 4a) i) as well as its regulation paragraphs 3b) viii) b) ix) i)

This violation allows mi client to prosecute against you the corresponding suit claim before the Centre of mediation and Arbitration of OMPI.

For these moments we take the liberty to address you the present claim requesting you that in a maximum deadline of 10 natural days you consent to apply for an voluntary abandonment application before your registrar and to stop in the use by any means of the denomination XXX or any other similar that may give rise to confusion or association.

Please note that in case this should be ignored by you , our client will make use , without the necessity of any previous letter or notice of the pertinent legal actions for the resolution of the dispute in domain name field , as well as the possible civil and penal actions established by the specific ruling. "


my
1st question how they get notified immediately that i registered their TM domain?
2nd question what is the worst consequences of this claim?if they apply WIPO they get domain from me. anything else?

i am not a lawyer {buy do enjoy buying legal domain names} etc

but it is only a matter of time before domain name investors pass on any legal redress to the registrar they purchased a trademark infringed domain from as if legalities are entering the domain name industry which obviously they are - the trade description act should enter the domain name industry too - eg registrars should not be allowed to sell trademark infringed domains to anyone but the trademark owner those domains relate too

eg if i buy an icecream etc i am allowed to lick the icecream whilst vendor is getting my change etc i do not have to test the icecream to see if it is edible etc that is the responsibility of the vendor and manufacture etc

but in the domain name industry it seems perfectly acceptable for a registrar to make available domain names that infringe trademarks on a {its not their problem} basis which it most definately is

all domain names should be manually checked for trademarks by a registrar prior to making them available on their websites and if a registrar has trademark infringed domain names on its website those such domain names should be marked {trademarked} at the side of the domain name

 

[Justin Matmor]

The issue here is that we need to check for trademarks in every country before we register - not just the US.

How practical is that?

 

[jberryhill]

The issue here is that we need to check for trademarks in every country before we register - not just the US.

How practical is that?

How practical is it to figure out whether there is someone using a term in a distinctive manner in association with goods or services originating with them, or how well known they might be?

Ever heard of Google?

Okay, let's see how hard this is with a contest... I just made up a string of letters - "bebebedo"

Now, who can tell me what goods or services you would want to avoid, or in what area you might want to look further into trademark registrations, if you registered the domain name "bebebedo.com"?

Also, if you have a guess, tell me how long it took you to figure that out.

 

[jberryhill]

registrars should not be allowed to sell trademark infringed domains to anyone but the trademark owner those domains relate too

That's absurdly simplistic, for a number of reasons.

If you sell apples, the fruit, and you want to register a domain name to sell your apples, the fact that Apple has trademarks in the word "APPLE" in it has no bearing on your purpose for registering the domain name. Whether or not your USE of the domain name is infringing has nothing to do with the domain name by itself. If you look at the UDRP, for example, there are three elements:

1. Whether or not the domain name is identical or confusingly similar to a mark in which the complainant has rights.

2. Whether you have legitimate rights or interests in the domain.

3. Whether you registered and used the domain name in bad faith.

Identity or similarity to a mark is only one of three elements. In Canada, for instance there is a gentlemen whose name is A. R. Mani. That's the guy's name. He registered a domain name with "Armani" in it, and prevailed in a UDRP challenge because his use of the domain name for personal reasons had nothing to do with the Armani mark.

Likewise, if you are someone who sells or services a specific product, then you are certainly allowed to communicate that fact. Do you repair Volkswagens in Ohio? Then, OhioVolkswagenRepairs.com is a perfectly acceptable domain name for you to register and use.

Registrars don't have any way of knowing why or how you intend to register a domain name, and they don't have any way of knowing whether or not you are authorized by a trademark owner to use the mark. The registration agreement is quite clear that it is your responsibility to figure out whether or not you have the right to register and use a domain name in the manner you intend to register and use it.

My name is, in fact, a trademark for a restaurant chain in the southern US. I'm perfectly entitled to register and use my name for other things - because I'm not running a restaurant.

Registrars provide a technical service of registering domain names, just like sporting goods dealers sell cricket bats for playing cricket. If you decide to buy a cricket bat in order to go beat someone with it, then it was not the responsibility of the sporting goods dealer not to sell you a cricket bat.