question Trademark Question again

[blogspotter]

I was in a Namejet Auction because that domain was registered in hundreds of variations and it has several companies and it never occured to my mind that it could be trademarked.

But as I did more research, i suddenly realize that not only is it the name of a company, it is also the name of a flagship product of that company.

I won't bet getting into the hassle now, and it is gone over 2000 in bid.

On Justia there a few companies that have registered the same trademark for use in two different industries.

So, will it be right to assume that It won't be 100% clean, right?

 

[jberryhill]

So, will it be right to assume that It won't be 100% clean, right?

Let's say the domain name is Monster.tld.

Well, gee, "MONSTER" is the flagship product of the people who make MONSTER energy drinks, another company that makes MONSTER audio-video cable, and the MONSTER employment listing service at monster.com.

So what happens if someone buys the domain name monster.tld ?

It depends on what they decide to DO with the domain name.

If they put it on automated PPC and it comes up with links for the energy drink, they are toast.

If they put it on targeted PPC and it comes up with links for halloween costumes, they are fine.

If they put it on a "for sale" lander, then it is an ambiguous situation, so I'll give a few scenarios for that:

(a) If they put in on a "for sale" lander and spam the corporate offices of the energy drink people trying to get them to buy it, they are toast.

(b) If they put it on a "for sale" lander which says "This would be a great name for halloween costumes" and send emails to the top five makers of halloween masks, they are in pretty good shape.

Incidentally, since pretty much every question in this forum is a trademark question, then "Trademark Question Again" might not be a subject line which adequately distinguishes this thread for others who might be trying to use this forum as a resource.

 

[rokarmy]

Let's say the domain name is Monster.tld.

I have a question. For example, the trademark MONSTER.
I recently bought the MOSTER.tv domain at auction. Of course, it's for sale.
But I found it registered as a "MONSTER TV" trademark.
Is this a trademark violation?

 

[karthick55]

Hi trademarks are country dependent and industry specific. So even if some one have a trademark for monster tv in a country it cant prevent another one to purchase a domain monster.tv as the person might have plans to do business in a country where there is no trademark by the trademark holder. So it depends on situations and cannot be a violation in all cases. I am a advocate and a domainer. Thanks.

I have a question. For example, the trademark MONSTER.
I recently bought the MOSTER.tv domain at auction. Of course, it's for sale.
But I found it registered as a "MONSTER TV" trademark.
Is this a trademark violation?

 

[karthick55]

Unless it is declared as a well known trademark by WIPO in all the product and service classes of the world.

 

[rokarmy]

Hi trademarks are country dependent and industry specific. So even if some one have a trademark for monster tv in a country it cant prevent another one to purchase a domain monster.tv as the person might have plans to do business in a country where there is no trademark by the trademark holder. So it depends on situations and cannot be a violation in all cases. I am a advocate and a domainer. Thanks.

Thank you for your clear advice!

 

[monotheist]

Very beneficial thread. Two more scenarios what if someone buys monster.yachts and puts up a website buying/selling Yachts and what is someone buys monster.online and does nothing with the domain. I mean no landing page, no PPC. No sale page. The domain simply shows registrar parking page.

 

[monotheist]

Unless it is declared as a well known trademark by WIPO in all the product and service classes of the world.

how do we find that out? I see a classification called International trademark in WIPO site. Is that classified as well know brand?

 

[jberryhill]

how do we find that out?

How do you find out if something is famous? Really?

Okay, first off, no, WIPO is not in charge of what is well-known or not.

But let’s try a little exercise, okay?

I’m going to give you the names of two people. You tell me if one of them is well-known or famous, and then tell me what online database you used to figure it out:

(a) Donald Trump

(b) Robert McGee

One of those people is more well known than the other one. See if you can figure it out without using a WIPO online database.

Now let’s try it with trademarks. Again without using an online database of any kind, which if these two trademarks might be more well-known:

(a) Coca-Cola

(b). Wawa

That one points out another fact about “well-known” trademarks. In the mid-Atlantic east coast region of the US around Philadelphia, Wawa is an extremely well-known mark. One way to find that out is to use GOOGLE because it turns out that the more well-known something is, the more results you’ll get for that particular thing in a Google search.

But I’m willing to bet that you and anyone else who has ever stepped outside of their home, probably picked Coca-Cola as the more well-known mark. How did you do it?

 

[TheBuyerz]

There are a few bottles of coca cola in my fridge and not wawa, even if I am overseas.

 

[jberryhill]

There are a few bottles of coca cola in my fridge and not wawa, even if I am overseas.

There you go. Anything in @TheBuyerz fridge is famous.

It’s like I always say... What’s the difference between a Lamborghini and a pile of dead bodies?

I don’t have a Lamborghini in my garage.

 

[monotheist]

My question was when @karthick55 said "declared as well known trade mark by WIPO". Hence I wanted to know if WIPO has some classification. What you are saying is general? Everybody knows that. I wanted to know if WIPO had any classification.
Also one more question, out of all the ambiguous scenarios mentioned above, which is the safest?

 

[jberryhill]

I know. I just like to have some fun once in a while. Many years ago, I was on an ICANN working group which was supposed to come up with a system for identifying "famous trademarks".

This is a little dated, but a good read: https://archive.icann.org/en/wipo/FinalReport_4.html

From "safest" to "least safe":

1. Targeted PPC parking - where the PPC keywords have been chosen to correspond to the common meaning of the word or phrase constituting the domain name.

2. Customized for sale lander - where the "for sale" page explains why the word or phrase has value.

3. Generic for sale lander.

4. Automated PPC parking - practically guaranteed to converge on the trademark significance, if any, of the domain name.

 

[monotheist]

Thank you. What about domain redirecting just the registrar parking page showing no intention to sell?

 

[tady_bear]

Here is another case.

Does using a Trademark word in your post title also violates the trademark? i.e. best routers cnet, "cnet" is a trademark?.

Regards.

 

[jberryhill]

What about domain redirecting just the registrar parking page showing no intention to sell?

Why?

You are either interested in selling a domain name or you are not.

Registrar parking pages tend to fall into the "automated ppc" category above. If there is an obscure trademark meaning for a word or phrase, automated ppc systems tend to be pretty good at converging on that trademark meaning, even if you are totally unaware of it.

But I don't get the "showing no intention to sell" part. You are either selling domain names or you are not. Looking to sell domain names under the notion that you somehow have to pretend you are not, is simply foolishness. I don't understand the point.

 

[monotheist]

Is it possible that any of the forum members could look into my portfolio and indicate possible trademark infringements? I have around 400 domains.

 

[NewDayBrand]

Hello dear all
Thank you for all this valuable information
@jberryhill I use to check trademarks on https://trademark-search.marcaria.com/
I have a domain name of the form Name.extension
knowing that I didn't find any trademark registered in this name
and knowing that NameExtension.com is operational and that Name.Extension may even be an old domain of the same company that owns NameExtension.com
1. Do I violate any law by parking Name.Extension and displaying ads in the same industry in which NameExtension.com operates? (since it seems "Name" is not even a trademark)
2. Do I violate any law by parking Name.Extension and displaying ads for a different industry/product/service?

Thank you very much

 

[efizi]

Why?

You are either interested in selling a domain name or you are not.

Registrar parking pages tend to fall into the "automated ppc" category above. If there is an obscure trademark meaning for a word or phrase, automated ppc systems tend to be pretty good at converging on that trademark meaning, even if you are totally unaware of it.

But I don't get the "showing no intention to sell" part. You are either selling domain names or you are not. Looking to sell domain names under the notion that you somehow have to pretend you are not, is simply foolishness. I don't understand the point.

Hi @jberryhill,

Thanks for the information provided so far.

I was just hot with a UDRP on one of my domains. Well its not mine as I would never register such but I registered it for a friend who sets up websites and emails with the names for business.

However, no website no email has been setup for this domain yet, it only displays the default registers dns page with the words coming soon. No PPC parking, no for sal e landing page. I do not intend to respond to the UDRP since I hane no interest whatsoever in the name, and i have discussed with the owner and I do not think there is any plan yet to use it (its been registered for a year now).

Are there any consequences to not responding to a UDRP apart from loosing the domain? I just want to have an idea of whats at stake here.

The name is is G/i/l/e/a/d/A/f/r/i/c/a.com and the complainant is G/i/l/e/a/d.com

Thanks.

 

[monotheist]

Hi @jberryhill,

Thanks for the information provided so far.

I was just hot with a UDRP on one of my domains. Well its not mine as I would never register such but I registered it for a friend who sets up websites and emails with the names for business.

However, no website no email has been setup for this domain yet, it only displays the default registers dns page with the words coming soon. No PPC parking, no for sal e landing page. I do not intend to respond to the UDRP since I hane no interest whatsoever in the name, and i have discussed with the owner and I do not think there is any plan yet to use it (its been registered for a year now).

Are there any consequences to not responding to a UDRP apart from loosing the domain? I just want to have an idea of whats at stake here.

The name is is G/i/l/e/a/d/A/f/r/i/c/a.com and the complainant is G/i/l/e/a/d.com

Thanks.

What kind of response are they expecting? What are the options?

 

[efizi]

What kind of response are they expecting? What are the options?

I really do not know.

I have attached a screen shot of the the reasons for the UDRP.

 

[monotheist]

I really do not know.

I have attached a screen shot of the the reasons for the UDRP.

They are asking for a transfer in point five. Go ahead and do that.

 

[efizi]

They are asking for a transfer in point five. Go ahead and do that.

Noted. Many thanks!!!

 

[jberryhill]

Hey gang, could we please try to:

1. Keep the forum to "one topic per thread" and to follow-up questions that directly relate to the topic at hand. If you have a different question, start a different thread.

2. Use subject lines for topics that might help someone looking for discussion on a similar topic? Practically every question in this forum is a "Trademark Question" since that is a primary legal issue in domaining. Maybe try to be more specific.

If you are seeking legal advice on an actual specific question, in contrast to a general question about a legal topic, please read my comments here about why you should not be doing that on a web forum, and why a lawyer cannot give you legal advice on a web forum:

https://www.namepros.com/threads/th...-trademarked-what-to-do.1215250/#post-8024314

And, finally, just this once - no, if you have received a Notice of Commencement in a UDRP proceeding, the domain name has already been locked by the registrar and you cannot transfer the domain name. The registrar can only transfer the domain name if instructed to do so by the UDRP provider. Rule 17 of the UDRP provides a mechanism for doing that on a voluntary basis.

 

[The Durfer]

applecart.com
applecar.com

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