Trademark questions

[valuedomains1]

One thing that concerns me as I start to get into domaining is the trademark issue. Needless to say, the thought of getting into some kind of a conflict over this is kind of scary. My question, therefore, is where do you go to check definitively for whether a domain name you're considering violates a trademark? Also (and, by the way, while I know this isn't a legal forum and there probably aren't any lawyers here), I'm sure most of you deal with this type of thing all the time), does anyone know how close something has to be to a trademarked name to be a problem? That is, here's an example I thought of. Obviously, McDonald's is a trademarked name. But what if, completely hypothetically (it's not even available), I wanted to register the name mcdonald.com -- note the lack of an "s" at the end. Would that, do you think, likely count as a trademark violation just because it's similar to a trademarked name?

Any ideas would be appreciated. Thank you!

 

[enlytend]

Probably had competing ads on the parked pages - that'll do it.

 

[main]

How about this situation I run across fairly often. These aren't the best examples, but maybe it'll get across the point. I see a nice .com that isn't quite generic, but almost. There are multiple different businesses using the keywords as their brand and there may or may not be a registered trademark among them. Something like "Harbor Realty" or "Advantage Dental".

Or when there are multiple registered trademarks for different use. Let's say like "Power Plus". If I snag the name, shouldn't I be free to market the name with a sales page with a clear intention to profit. Why should exactly one of those many brands using Power Plus be entitled to the .com even with their trademark?

How do you tread in these cases?

 

[verbster]

Strangely enough, the domain is owned by the restaurant group I transferred it to, but it's parked at Fabulous, where I think I had it parked so long ago. Would love to see the stats on it, lol.

 

[Respondent]

Well, in fact, if you will take the time to read the WIPO cases posted on their wesbite, you can really learn a lot on how trademark works as far as domains are concerned.

Many explanations there, the accusation, the defense, then the ruling of the judges, the lessons are very straightforward. You can pick-up ideas on how to maneuver yourself around these trademark issues.

First, disclaimer: I am not a lawyer. If you need legal advice then seek real legal advice. I highly suggest it. Not that that's out of the way.

Agreed, this is the best way to give yourself an informal education on how domain / trademark issues work. I think anyone in the business of owning a good number of domains should familiarize themselves with this. I was like the most of you, just buying domain names and life was great. Until ...

I just went through the process the hard way. I've own domains since 1995 and have built up a decent portfolio of generic domain names. Never have I had to deal with an UDRP complaint until now.

It sucks big time. Due to timing, it really put a lot of stress on me. I got a complaint several days before going on a preplanned family vacation. Long story short, I found a great lawyer to help me out. Now some might say, it's just a domain name is it worth all the trouble. It depends if you could generate over $1k with a domain in a year (affiliate sales, ad revenue, etc), then fight a domain dispute if you can. You don't need a lawyer. You can do it yourself. But trust me, I tried with the lack of sleep and stress. It just wasn't worth it. Which is also why it's not cheap when you get a lawyer in this field.

And here's another tip after having first reviewed at least 30 cases. It's not just trademark infringement that you have to worry about. But there is something also known as common law rights. Just because you did a basic trademark search doesn't mean that someone else didn't have common law rights established way before you registered that domain name. Now you could claim that you didn't know that the other existed. But this crap gets complicated. You are at the mercy of the arbitration panelist(s). Lot's of fun details to deal with. The moral of the story is get a lawyer or not. It all depends what's on the line and is it worth your time and money.

And yet another little gem, if you do not repsond to a UDRP complaint. You (aka the respondent) will be considered in default. Now that doesn't mean you automatically lose the domain name. What happens is that the panel takes that into consideration and makes a ruling. I have seen cases where respondents didn't respond and the panel still ruled in their favor. Can it happen? Yes. Do I recommend it? No, you put yourself at the mercy of the panel. Again, I am just putting it out there. I have seen this happen.

Lastly, don't get a domain name if you know it is part of a trademark or belongs to a well know company. You will most likely lose it in the end. So what was the point in the first place? I could go on. But enough for today. I hope this helps someone.

 

[main]

How about this situation I run across fairly often. These aren't the best examples, but maybe it'll get across the point. I see a nice .com that isn't quite generic, but almost. There are multiple different businesses using the keywords as their brand and there may or may not be a registered trademark among them. Something like "Harbor Realty" or "Advantage Dental".

Or when there are multiple registered trademarks for different use. Let's say like "Power Plus". If I snag the name, shouldn't I be free to market the name with a sales page with a clear intention to profit. Why should exactly one of those many brands using Power Plus be entitled to the .com even with their trademark?

How do you tread in these cases?

Another name similar to the situation I described in my previous post closed at auction yesterday, EnergyForce/com. It has a registered trademark as well as being registered in numerous extensions and being used as a brand in a variety of fields like human resources, energy consultancy, and other areas.

With this type of domain name, is it okay to market your name with the clear intent of profit by having a for sale landing page and having it listed on multiple marketplaces?

 

[Respondent]

Again, I am not a lawyer nor do I play one on TV.

But, if you know deep down that you might be playing with fire. Then I think you know you're playing with fire.

People could sue you or file a UDRP complaint for absolutely any reason. I'm not saying to curl up into a fetal position and never buy another domain name. But if you you want to dance, then get ready to either defend yourself or be willing to give something up.

As an example of a recent ruling showing you that for any reason they could file a complaint. Check out this out as someone put it "a ‘typo’ trying to snatch the real thing" ... Ruraliving.com (missing the other letter “L”) vs RuralLiving.com . I hope in some way this helps.

 

[Name Trader]

I would say it is ok provided you are not infringing on anyone's trademark. Which could be disputed either way in any UDRP. But because you could both win or lose the UDRP, I would suggest a much more stealth approach to your marketing. Or, to not touch the domain at all.

The argument for no TM infringement is you are a Domain Investor by trade, you bought the generic domain, and are only pursuing your rights to market the domain for profit, and there was no bad faith registration.

The argument for TM infringement is you are profiting off of somebody else's well known trademark.

You would need to choose a 3 man panel to avoid the vagaries of 1 man panel decisions, which will cost you more money.

If you are prepared to fight any UDRP, then you could buy the domain. If not, then you should leave well alone. But you could eat up any potential profit simply defending any UDRP's, so is it really worth all the worry and expense. Personally, I think not.

 

[Respondent]

You would need to choose a 3 man panel to avoid the vagaries of 1 man panel decisions, which will cost you more money.

Yeah, at the current rate of $4,000. And that doesn't include if you got a lawyer and your own legal fees. That's just $4,000 if you opt for 3 panelist in a UDRP as a respondent. So the question again and to weight in is it worth it to you?

Also as stub stated, if you could afford the 3 panelists always go with that option. Why? As in the case I linked to above, 2 of the panelist let the domain stay with the domain owner. While one rogue panelist sided with the complainant. Now imagine, if you were going to fight a UDRP and instead of getting one of the other 2 panelist, you end up with that one rogue panelist. You are screwed. I hope this helps.