Trademark Question

[Redrum]

Hi everyone!!

If there's a topic that confuses me in domaining, that is Trademark issues. I've been reading about it and even listening to an interesting podcast from DS, and now i think I got a global idea on it. However, when I try to wonder about practical cases I realise I doubt about everything. Here's an example:

Lets say a Company "A" had its website built with "companyA.us" domain because "comapanyA.com" was unavailable at that moment. Then, someone finds the .com domain in GD closeouts, buys it and tries to sell it to Company A.

Would this case be considered a trademark fault?

This is only one of the questions that i come up with when thinking about trademark issues. If any of you have others, it would be useful to share them in here so we can discuss and maybe reach some answers.

Thanks a lot!

 

[jberryhill]

Carter, in that type of situation, a finder of fact would want to go deeper into the situation.

There are situations where people come up with a "legitimate" business plan of some sort which is just a fig leaf for attempting to extort trademark owners.

Now, (1) is the use, in some general sense, of a trademark as a nominative reference to identify what is clearly third party reviews of that product lawful? Well, yes of course, it is necessary to use the mark in order to refer to the product/service in question. If I have something to say about Volkswagen, their cars, or their criminal violations diesel regulations, then I can't very well say "A German car maker". That could be Audi, BMW, Mercedes, and so on. In order to talk about Volkswagen, then it is necessary to use the word "Volkswagen". There are different opinions - even among UDRP panelists - as to whether that gives me the right to register an unadorned trademark.tld domain name instead of something like trademark-opinions.tld.

The case of ".reviews", specifically intended to indicated consumer reviews, raises something of a new fact for those panelists to argue about, since the "possibly third party" signal is built-in to the TLD.

But, leaving that aside, proceeding to: (2) is it legitimate to run a business based on publishing reviews of products? Well, sure, we see that all over the place.

Then we come to (3) is it legitimate to sell your business? Again, no brainer, sure.

Now what happens in domain land is that some idiot then gets the idea that what he'll do is to pretend he's running such a business, register a raft of domain names, and use the facade of his phony "business" merely as an excuse to register those domain names for the purpose of extorting the corresponding trademark owners. "If you don't control this name, then people might say all sorts of bad things about your stuff".

There's a line to be drawn there, and if I were deciding the case, I'd want to know a little bit more about your business and whether it is merely being proposed as an excuse to register the domain names - in other words, whether the horse was pulling the cart or the other way around.

To see how this sort of thing plays out, the adventures of the "Yoyo email" guy with the .mail TLD is a fine example of an elaborate bullshit excuse to register a bunch of famous trademarks as domain names.

 

[jberryhill]

To put it simply, many domainers seem to expect that a legitimate business looks like this:

If that's what your "legitimate business" looks like, then don't expect others to agree.

 

[mirecart]

Carter, in that type of situation, a finder of fact would want to go deeper into the situation.

There are situations where people come up with a "legitimate" business plan of some sort which is just a fig leaf for attempting to extort trademark owners.

Now, (1) is the use, in some general sense, of a trademark as a nominative reference to identify what is clearly third party reviews of that product lawful? Well, yes of course, it is necessary to use the mark in order to refer to the product/service in question. If I have something to say about Volkswagen, their cars, or their criminal violations diesel regulations, then I can't very well say "A German car maker". That could be Audi, BMW, Mercedes, and so on. In order to talk about Volkswagen, then it is necessary to use the word "Volkswagen". There are different opinions - even among UDRP panelists - as to whether that gives me the right to register an unadorned trademark.tld domain name instead of something like trademark-opinions.tld.

The case of ".reviews", specifically intended to indicated consumer reviews, raises something of a new fact for those panelists to argue about, since the "possibly third party" signal is built-in to the TLD.

But, leaving that aside, proceeding to: (2) is it legitimate to run a business based on publishing reviews of products? Well, sure, we see that all over the place.

Then we come to (3) is it legitimate to sell your business? Again, no brainer, sure.

Now what happens in domain land is that some idiot then gets the idea that what he'll do is to pretend he's running such a business, register a raft of domain names, and use the facade of his phony "business" merely as an excuse to register those domain names for the purpose of extorting the corresponding trademark owners. "If you don't control this name, then people might say all sorts of bad things about your stuff".

There's a line to be drawn there, and if I were deciding the case, I'd want to know a little bit more about your business and whether it is merely being proposed as an excuse to register the domain names - in other words, whether the horse was pulling the cart or the other way around.

To see how this sort of thing plays out, the adventures of the "Yoyo email" guy with the .mail TLD is a fine example of an elaborate bullsh*t excuse to register a bunch of famous trademarks as domain names.

Thank you for an incredibly well balanced reply to a troubling question I've spent many weeks debating on.