Trademarks - How to properly establish whether a name/word is registered and/or being used

[Vertibox]

I would like to learn about the definitive rules about trademarks, as they pertain to domain name registrations.


From reading John Berryhill’s numerous inputs on this topic, and from others, it seems the subject is not black and white nor can it be easily determined, one way or another, by otherwise lay people.



1. How to search for registered trademarks.

I have long used the USPTO TESS search site, which I find partly dissatisfactory when there is more than a few of pages of results to look through, when I have selected “General search” from the blue options box next to the search bar.

Due to my getting many pages (often 50+) of results on multiple word searches, I have recently started searches with the "Wordmark" option selected from the left blue box. I don’t know if this is the right way to search or not, but I don’t know how else to avoid getting 99%, or more, of irrelevant results, which are produced and which can a take a long time to look through.

Can John or someone else advise on how to correctly search for words and how best to search for multiple words, say 2 or 3 words? I did try putting two words in quotation marks like when one searches on the web, but this had no effect.
For clarity, my searches do not contain common dictionary words, but for some reason, I get many pages of trademarks of words/names that have nothing at all to do with the term I have entered in the search bar.



2. Where to search for registered trademarks.


I use TESS and recently, I have started using the WIPO Brands database. I am unclear however if there is a global repository/record of all registered trademarks, or not. Is there one, or are people expected to search on multiple sites, one by one?

Related to this is whether each country has its own website for registered trademarks and if so, then the task of searching every site is surely beyond anyone’s ability and time to do so.

The question of how to search for trademarks on TESS also applies to the WIPO Brands database.


3. Web searches.

To discover whether or not there is a trademark of a name I am interested in and which is being used/is active, I use the main search engines, as recommended by John. But this is a hit and miss affair and quite an unsatisfactory undertaking, because I have found that search results seem to vary by several factors - the location I happen to be in at the time, the device I am using (desktop computer, mobile phone, tablet, etc.), the operating system on the device, the browser being used as well as which version, plus which search engine is used. Results might vary further by additional factors. How then is someone supposed to establish, without much doubt, if some form of presence for a name/mark is in existence at the time of searching, or not, without having to carry out several tedious and drawn out searches, from different locations (not feasible), different devices, different browsers and different search engines?

Finally, is there some definitive guide to trademarks, written for domain investors, or written in non-lawyer speak?

 

[alop]

I like this one

 

[jberryhill]

1. There is a more complex search query system:

Select "Field Tag and Search Builder"

Instructions for searchable fields is under "help":"advanced". It describes all of the search fields and how to use them.

For example, if I want every "live" record that includes the words "this" or "that":

CM:this AND CM:that AND LD:"true"

Each of the data fields can be searched by field tag. Date ranges for filing, registration, etc., disclaimer text, all kinds of things. Additionally, if you do successive searches you can combine them by referring to the search number since the system keeps track.

How comfortable you are with that may depend on your experience with database searching generally. It would be great if it used Unix regular expressions, but it doesn't. There are also some things to keep in mind such as capitalizing logical operators (like "AND" in the example above).

2. Do NOT use garbage like Trademarkia. Always go to the source. The best global coverage for countries which have electronic search systems is EUIPO's Trademark Data Network - tmdn.org . Select TMView as the service of interest. It provides a pretty flexible system with a number of filtering options, etc.. If you register for a free account, you can download results. Searching the WIPO Madrid Filing index is a waste of time. WIPO doesn't grant trademark registrations. The Madrid system provides a single intake mechanism for an application which is eventually funnelled to whatever countries are selected in the application. So, sure, you can find tons of WIPO Madrid filings which never actually registered in any of the designated countries. The point of the Madrid system is universally misunderstood by domainers. But, if a Madrid application is registered in one of the designated countries, you know where you are going to find that out? In the EUIPO TMDN system. I've been a trademark professional for three decades now. I never use the WIPO search system for anything. [1]

3. Bear in mind that the idea here is to avoid circumstances in which someone might plausibly accuse you of deliberately going after their trademark. One of the reasons why "not all trademarks are equal" is the extent of their reputation, the size of their market, the extent of their fame, etc.. If you are tying up in knots trying to tease out whether some guy is selling homemade fruit juice from a roadside hut in Lesotho, consider the probability of him filing a UDRP or establishing a credible case you targeted him.

Further on point 3, it is important to realize what these thing frequently come down to is a subjective exercise in "what is the more likely explanation for the domain name registration".

For example, I recently concluded this case for Clio.ai:

https://www.adrforum.com/DomainDecisions/2139218.htm

Now, in that case, as in many cases, the Complainant had a trademark in "CLIO" before the domain name was registered. It's not as if the existence of "a trademark" is determinative of the outcome of these things. It is one of three things the complainant has to prove. I've never done an analysis, but I would guess that in most of the cases I have defended, the complainant had a trademark before the domain was registered.

I think what a lot of folks miss, in the obsession over "is there a trademark" is the larger picture - what do the objective facts suggest about WHY the respondent registered the domain name. I mean, pretty much any word or name is a trademark for something somewhere.

But this is what I mean by the "larger picture". Here is an excerpt from the response in Clio.ai in which "Clio" is the name of one of the muses of Greek mythology

-----------

Simply looking at Greek mythological references alone, the Respondent also owns Thalia.ai, the muse of comedy, along with all of the following mythological persons and places as .ai names (Exhibit E):


athena
aphrodite
hera
demeter
theta
clavis
cepheus
eurydice
orpheus
viribus
pleiades
prometheus
olympus
elektra
callisto
icarus
proteus
aegis
romulus
achilles
ulysses
nephos
adonis
cygnus
perseus
acheron
cressida
acropolis

In fact, the name "Clio" is applied to so many things that Wikipedia has a "disambiguation page" for all of its various entries for the term (Exhibit F), including:

Eight geographic names, including several US cities

Eight notable persons named "Clio"

Four technical and acronymic uses

...and several ships along with a roster of companies and brands which concurrently use the mark "CLIO" for various goods and services.

As a first name, consistent with its mythological namesake, it is usually used for females. LinkedIn (Exhibit G) lists over 700 persons having the first name "Clio" and over 500 persons having the surname "Clio". This is not the result of a global conspiracy to usurp the Complainant's limited rights in CLIO in connection with specialized law firm administrative technical software. It is simply a function of its popularity as a name. Here again, as a personal name, the Respondent's registration of Clio.ai is consistent with the following personal names, all registered to the Respondent in the .ai ccTLD (Exhibit H):


mona
rosa
gwen
leon
greg
sean
owen
jude
glen
suzy
dave
doug
john
abby
neal
karl
jill

----------------------------------

Yes, of course, the Complainant has a trademark. But the question comes down to:

------------------------

Absent finding the boundary between the "good faith list price" and the "bad faith list price", the Panel might alternatively consider the objective evidence of record and decide what that evidence shows most likely motivated the Respondent to register the domain name and offer it for sale:

(a) The domain name was one of a considerable collection of .ai domain names registered by the Respondent in the 2020 time frame, with a substantial number of four-letter names, personal names, and mythological references, or

(b) While objectively and indisputably engaging in the behavior set forth in (a), the Respondent took time to read a blog post on the website of a law firm management software provider, and correctly predicted that some two years later, that niche service provider would incorporate AI into its products, in the hope that five years later the Complainant would want it, despite having a perfectly serviceable .com name.

-----------------------

So, look at the facts. What do you think was more likely? (a) or (b)?

You are never going to reach 100% certainty that nobody has a trademark which is identical or similar to a domain name you are considering.

But this stuff is not solely about "is the domain name identical or similar to a trademark". That gets a UDRP complaint to their own 33 yard line, with another 67 yards needed to reach the goal.

If you are managing a large, or growing, portfolio, there is no way you are going to flyspeck every name in the portfolio. The good news, however, is that you don't have to.

Let's say you have 1000 names. Maybe in the course of a month, you get inquiries on 10 of them. Definitely check those 10 names out. Keep track of the FIRST inquiry on every name you have, and PROMPTLY run a background check and look at ppc targeting, consider lander text, etc.. You might find a problem that requires you to adjust your expectations. You might find a minor issue that can be addressed by appropriate sales lander text or PPC targeting (or taking it off PPC if you can't control targeting).

But it's not "how do I clear 1000 names?". It's "how do I check out THIS name that someone is asking about TODAY". The 500 names that nobody is interested in aren't going to be the source of your problem. The source of your problem is going to be that GoDaddy broker inquiry that came and went away, but was prompted by a trademark owner on an evidence collection exercise.

If you are doing pre-purchase investigation of a name, you have to ask yourself "Why do I think this name has objective value, and how would I explain that if called out to explain why I registered it?" For as much noise as people make about the UDRP, I'm going to grab a random sample of just-filed cases at WIPO....

https://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=D&year=2025&seq_min=1800&seq_max=1999

D2025-1896	sodexo-groupes.com	Sodexo	-	Compliance Review Pending	Pending
D2025-1897	s0dex0india.com	Sodexo	-	Compliance Review Pending	Pending
D2025-1898	ninjacasinox.com	Ninja Global OÜ	-	Compliance Review Pending	Pending
D2025-1899	jaquelknight.com	JaQuel Knight, J.K. Creatives, Inc.	-	Compliance Review Pending	Pending
D2025-1900	valero-jobs.com	Valero Energy Corporation Valero Marketing and Supply Company	-	Compliance Review Pending	Pending
D2025-1901	allianza-gt.com	GALADTRANS 2009, S.L.	-	Compliance Review Pending	Pending
D2025-1902	budhagirlsw.shop	BuDhaGirl, LLC	-	Compliance Review Pending	Pending
D2025-1904	admsalesdept.com	Archer-Daniels-Midland Company	-	Compliance Review Pending	Pending
D2025-1905	nippiesdeals.com	Autumn Ideas, Inc.	-	Compliance Review Pending	Pending
D2025-1906	snap-insta.app	Instagram, LLC	-	Compliance Review Pending	Pending
D2025-1907	zepboundnatural.com	Eli Lilly and Company	-	Compliance Review Pending	Pending
D2025-1908	cepac-bnk.com	Caisse d'Épargne et de Prévoyance Provence Alpes Corse (CEPAC)	-	Compliance Review Pending	Pending
D2025-1909	silkwormbymolecor.com	Molecor Tecnología, S.L.	-	Compliance Review Pending	Pending
D2025-1910	powerhorseenergy.com	Power Horse Energy Drinks GmbH	-	Compliance Review Pending	Pending
D2025-1911	schaefflergroups.com	Schaeffler Technologies AG & Co. KG	-	Compliance Review Pending	Pending
D2025-1912	malvernpanalyticals.com	Malvern Panalytical Limited	-	Compliance Review Pending	Pending

Or scan a longer list here:

https://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=D&year=2025&seq_min=1800&seq_max=1999

But, let's get real... What does anyone think is going to happen in a dispute brought by "Malvern Panalytical Limited" against "Malvernpanalyticals .com"?

or "snap-insta.app"?

or "valero-jobs.com"?

The reason why something like 90% of UDRPs result in transfers is because they should. Does anyone think a bank called CEPAC is going to have a problem winning cepac-bnk.com?

That's what the UDRP is about. All day, every day. It's about well known trademark owners playing whack a mole with obvious cybersquatters. The "interesting" stuff happens at the edges.

So, yes, you should absolutely be checking for potential trademark issues. But most of the "interesting" defensible UDRP cases involve domain names for which there is a clear value proposition just based on the domain name standing alone, regardless of whether some obscure company somewhere has a trademark, or whether there might be one of a dozen different trademark owners who thinks they are special.

[1] With the rare exception of when a UDRP complainant claims they have an "international registration", I will use it to find the list of all the designated countries which refused to register it in their jurisdiction(s).

 

[Bob Hawkes]

Thanks so much for that in-depth post @jberryhill that covered so much about where to search and how to use filters effectively. The information later on is pure gold. I hope many will read your post fully and take the message to heart.

Like the line "The "interesting" stuff happens at the edges."

Also, the following, and the general message to be clear on how you would defend a choice to acquire should it ever come up.

But most of the "interesting" defensible UDRP cases involve domain names for which there is a clear value proposition just based on the domain name standing alone, regardless of whether some obscure company somewhere has a trademark, or whether there might be one of a dozen different trademark owners who thinks they are special.

Your contributions are so valuable to the domain community.

Thanks, and have a good day.

-Bob

 

[jberryhill]

You're welcome.

And now the "news" bot account will push this thread down into oblivion, as it does to all substantive discussions in this forum.

 

[Bravo Mod Team]

And now the "news" bot account will push this thread down into oblivion, as it does to all substantive discussions in this forum.

This discussion is continued at https://www.namepros.com/threads/legal-discussion-forum.1353129/

Thanks again.

 

[Vertibox]

1. There is a more complex search query system:

Select "Field Tag and Search Builder"

Show attachment 275484

Instructions for searchable fields is under "help":"advanced". It describes all of the search fields and how to use them.

For example, if I want every "live" record that includes the words "this" or "that":

CM:this AND CM:that AND LD:"true"

Show attachment 275485

Each of the data fields can be searched by field tag. Date ranges for filing, registration, etc., disclaimer text, all kinds of things. Additionally, if you do successive searches you can combine them by referring to the search number since the system keeps track.

How comfortable you are with that may depend on your experience with database searching generally. It would be great if it used Unix regular expressions, but it doesn't. There are also some things to keep in mind such as capitalizing logical operators (like "AND" in the example above).

2. Do NOT use garbage like Trademarkia. Always go to the source. The best global coverage for countries which have electronic search systems is EUIPO's Trademark Data Network - tmdn.org . Select TMView as the service of interest. It provides a pretty flexible system with a number of filtering options, etc.. If you register for a free account, you can download results. Searching the WIPO Madrid Filing index is a waste of time. WIPO doesn't grant trademark registrations. The Madrid system provides a single intake mechanism for an application which is eventually funnelled to whatever countries are selected in the application. So, sure, you can find tons of WIPO Madrid filings which never actually registered in any of the designated countries. The point of the Madrid system is universally misunderstood by domainers. But, if a Madrid application is registered in one of the designated countries, you know where you are going to find that out? In the EUIPO TMDN system. I've been a trademark professional for three decades now. I never use the WIPO search system for anything. [1]

3. Bear in mind that the idea here is to avoid circumstances in which someone might plausibly accuse you of deliberately going after their trademark. One of the reasons why "not all trademarks are equal" is the extent of their reputation, the size of their market, the extent of their fame, etc.. If you are tying up in knots trying to tease out whether some guy is selling homemade fruit juice from a roadside hut in Lesotho, consider the probability of him filing a UDRP or establishing a credible case you targeted him.

Further on point 3, it is important to realize what these thing frequently come down to is a subjective exercise in "what is the more likely explanation for the domain name registration".

For example, I recently concluded this case for Clio.ai:

https://www.adrforum.com/DomainDecisions/2139218.htm

Now, in that case, as in many cases, the Complainant had a trademark in "CLIO" before the domain name was registered. It's not as if the existence of "a trademark" is determinative of the outcome of these things. It is one of three things the complainant has to prove. I've never done an analysis, but I would guess that in most of the cases I have defended, the complainant had a trademark before the domain was registered.

I think what a lot of folks miss, in the obsession over "is there a trademark" is the larger picture - what do the objective facts suggest about WHY the respondent registered the domain name. I mean, pretty much any word or name is a trademark for something somewhere.

But this is what I mean by the "larger picture". Here is an excerpt from the response in Clio.ai in which "Clio" is the name of one of the muses of Greek mythology

-----------

Simply looking at Greek mythological references alone, the Respondent also owns Thalia.ai, the muse of comedy, along with all of the following mythological persons and places as .ai names (Exhibit E):


athena
aphrodite
hera
demeter
theta
clavis
cepheus
eurydice
orpheus
viribus
pleiades
prometheus
olympus
elektra
callisto
icarus
proteus
aegis
romulus
achilles
ulysses
nephos
adonis
cygnus
perseus
acheron
cressida
acropolis

In fact, the name "Clio" is applied to so many things that Wikipedia has a "disambiguation page" for all of its various entries for the term (Exhibit F), including:

Eight geographic names, including several US cities

Eight notable persons named "Clio"

Four technical and acronymic uses

...and several ships along with a roster of companies and brands which concurrently use the mark "CLIO" for various goods and services.

As a first name, consistent with its mythological namesake, it is usually used for females. LinkedIn (Exhibit G) lists over 700 persons having the first name "Clio" and over 500 persons having the surname "Clio". This is not the result of a global conspiracy to usurp the Complainant's limited rights in CLIO in connection with specialized law firm administrative technical software. It is simply a function of its popularity as a name. Here again, as a personal name, the Respondent's registration of Clio.ai is consistent with the following personal names, all registered to the Respondent in the .ai ccTLD (Exhibit H):


mona
rosa
gwen
leon
greg
sean
owen
jude
glen
suzy
dave
doug
john
abby
neal
karl
jill

----------------------------------

Yes, of course, the Complainant has a trademark. But the question comes down to:

------------------------

Absent finding the boundary between the "good faith list price" and the "bad faith list price", the Panel might alternatively consider the objective evidence of record and decide what that evidence shows most likely motivated the Respondent to register the domain name and offer it for sale:

(a) The domain name was one of a considerable collection of .ai domain names registered by the Respondent in the 2020 time frame, with a substantial number of four-letter names, personal names, and mythological references, or

(b) While objectively and indisputably engaging in the behavior set forth in (a), the Respondent took time to read a blog post on the website of a law firm management software provider, and correctly predicted that some two years later, that niche service provider would incorporate AI into its products, in the hope that five years later the Complainant would want it, despite having a perfectly serviceable .com name.

-----------------------

So, look at the facts. What do you think was more likely? (a) or (b)?

You are never going to reach 100% certainty that nobody has a trademark which is identical or similar to a domain name you are considering.

But this stuff is not solely about "is the domain name identical or similar to a trademark". That gets a UDRP complaint to their own 33 yard line, with another 67 yards needed to reach the goal.

If you are managing a large, or growing, portfolio, there is no way you are going to flyspeck every name in the portfolio. The good news, however, is that you don't have to.

Let's say you have 1000 names. Maybe in the course of a month, you get inquiries on 10 of them. Definitely check those 10 names out. Keep track of the FIRST inquiry on every name you have, and PROMPTLY run a background check and look at ppc targeting, consider lander text, etc.. You might find a problem that requires you to adjust your expectations. You might find a minor issue that can be addressed by appropriate sales lander text or PPC targeting (or taking it off PPC if you can't control targeting).

But it's not "how do I clear 1000 names?". It's "how do I check out THIS name that someone is asking about TODAY". The 500 names that nobody is interested in aren't going to be the source of your problem. The source of your problem is going to be that GoDaddy broker inquiry that came and went away, but was prompted by a trademark owner on an evidence collection exercise.

If you are doing pre-purchase investigation of a name, you have to ask yourself "Why do I think this name has objective value, and how would I explain that if called out to explain why I registered it?" For as much noise as people make about the UDRP, I'm going to grab a random sample of just-filed cases at WIPO....

https://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=D&year=2025&seq_min=1800&seq_max=1999

D2025-1896	sodexo-groupes.com	Sodexo	-	Compliance Review Pending	Pending
D2025-1897	s0dex0india.com	Sodexo	-	Compliance Review Pending	Pending
D2025-1898	ninjacasinox.com	Ninja Global OÜ	-	Compliance Review Pending	Pending
D2025-1899	jaquelknight.com	JaQuel Knight, J.K. Creatives, Inc.	-	Compliance Review Pending	Pending
D2025-1900	valero-jobs.com	Valero Energy Corporation Valero Marketing and Supply Company	-	Compliance Review Pending	Pending
D2025-1901	allianza-gt.com	GALADTRANS 2009, S.L.	-	Compliance Review Pending	Pending
D2025-1902	budhagirlsw.shop	BuDhaGirl, LLC	-	Compliance Review Pending	Pending
D2025-1904	admsalesdept.com	Archer-Daniels-Midland Company	-	Compliance Review Pending	Pending
D2025-1905	nippiesdeals.com	Autumn Ideas, Inc.	-	Compliance Review Pending	Pending
D2025-1906	snap-insta.app	Instagram, LLC	-	Compliance Review Pending	Pending
D2025-1907	zepboundnatural.com	Eli Lilly and Company	-	Compliance Review Pending	Pending
D2025-1908	cepac-bnk.com	Caisse d'Épargne et de Prévoyance Provence Alpes Corse (CEPAC)	-	Compliance Review Pending	Pending
D2025-1909	silkwormbymolecor.com	Molecor Tecnología, S.L.	-	Compliance Review Pending	Pending
D2025-1910	powerhorseenergy.com	Power Horse Energy Drinks GmbH	-	Compliance Review Pending	Pending
D2025-1911	schaefflergroups.com	Schaeffler Technologies AG & Co. KG	-	Compliance Review Pending	Pending
D2025-1912	malvernpanalyticals.com	Malvern Panalytical Limited	-	Compliance Review Pending	Pending

Or scan a longer list here:

https://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=D&year=2025&seq_min=1800&seq_max=1999

But, let's get real... What does anyone think is going to happen in a dispute brought by "Malvern Panalytical Limited" against "Malvernpanalyticals .com"?

or "snap-insta.app"?

or "valero-jobs.com"?

The reason why something like 90% of UDRPs result in transfers is because they should. Does anyone think a bank called CEPAC is going to have a problem winning cepac-bnk.com?

That's what the UDRP is about. All day, every day. It's about well known trademark owners playing whack a mole with obvious cybersquatters. The "interesting" stuff happens at the edges.

So, yes, you should absolutely be checking for potential trademark issues. But most of the "interesting" defensible UDRP cases involve domain names for which there is a clear value proposition just based on the domain name standing alone, regardless of whether some obscure company somewhere has a trademark, or whether there might be one of a dozen different trademark owners who thinks they are special.

[1] With the rare exception of when a UDRP complainant claims they have an "international registration", I will use it to find the list of all the designated countries which refused to register it in their jurisdiction(s).

Thank you for your reply. I will need time to digest what you have written and I already have some questions which I will ask when I am ready to reply. I am only adding this reply now so you and anyone else doesn't think I am not paying attention (unlikely anyone who is reasonable would think so, but stil...).

 

[markfromslo]

@jberryhill Have you ever thought of writing a complete book on the subject of Trademarks and Domains? I'm sure you could charge a very high amount for it and still sell thousands of copies. I'd buy it immediately, no matter the cost.

 

[Vertibox]

You're welcome.

And now the "news" bot account will push this thread down into oblivion, as it does to all substantive discussions in this forum.

It's been a while and perhaps you thought I'd given up on coming back to you. Understandable, given the time that has passed.

Something I haven't yet understood is what is the relevance of which country a trademark is registered in?
In particular, if a company/entity registers a trademark in a particular country, does it mean that they have the exclusive right to that mark only in that country?
If so, does that mean that if someone reside/operates outside that country, they can legitimately register a domain name with the exact same name as the trademark?

Or are trademarks global?

I sometimes see multiple trademarks in different countries for the exact same name/mark which I have searched for but I don't understand what that means.
I understand that there will be instances of names/marks being used for different products/services/intentions and so I suspect that your answer will refer to this.

 

[jberryhill]

Something I haven't yet understood is what is the relevance of which country a trademark is registered in?

Okay, this is a "big topic" question.

There are questions like "What is the weather like outside?" which have answers like "It is raining."

Then there are questions like "What causes weather to change?" which have answers like "Read this book."

I'll walk through this, but I want to see you do some work.

Very simply put, having a registered trademark in country X entitles you to whatever rights the law of country X provides to registered trademark owners.

If you have a US trademark registration, then you can file a suit in a US court for trademark infringement, and the relevant US law will provide you with a suite of rights such as presumptive validity, ownership, national effect, and several other valuable advantages.

If you have a UK trademark registration, and nothing else, and you file a suit in a US court for trademark infringement, the court will look at you and go, "Huh?"

Also, under a treaty to which many countries are members, a trademark registration in one country will give you a right to file an application to register the mark in another country and obtain some procedural advantages.

What's missing from you question is "what is the relevance TO WHAT of which country a trademark is registered in?" If we are talking about ability to sue people in court for infringement, the relevance is huge. Trademarks are registered under the laws of various countries, and obviously those laws only apply to those countries.

Where people go wrong is that, with domain names, we are not concerned about the law of ANY country. We are concerned with application of the Uniform Domain Name Dispute Resolution Policy (UDRP).

The UDRP requires a complainant, from anywhere, to prove three things about a domain name, registered by a respondent, from anywhere.

1. The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights.

2. The Respondent has no rights or legitimate interests in the domain name.

3. The domain name has been registered and used in bad faith in relation to the mark.

Apply those three things to this situation:

(A) The domain name is Yayaya.tld. The Complainant is a mobile telephone provider in Brazil with a Brazilian trademark for "Yayaya" since 2020. The Respondent is Jose Santos of New York City in the US. The domain name was registered in 2023 and resolves to a parking page with PPC links to ads saying "Cartão SIM pré-pago", "Celulares no Rio de Janeiro" and "Internet sem fio".

You tell me. Tell me what you come up with for each of 1, 2 and 3.


Now apply those three things to this situation:

(B) The domain name is Yayaya.tld. The Complainant is a mobile telephone provider in Brazil with a Brazilian trademark for "Yayaya" since 2020. The Respondent is John Johnson of Minneapolis in the US. The domain name was registered in 2023 and the Respondent uses it for a blog about living in Minnesota.

Tell me what you get for 1, 2 and 3.

And, before you do that, please watch this movie clip from "Fargo':

Under the UDRP, we don't care where the complainant has a trademark, and we don't care where the respondent is located. What we care about is whether the facts support a likely conclusion that the respondent registered the domain name to take advantage of the complainant's mark. Period.

 

[Vertibox]

Okay, this is a "big topic" question.

There are questions like "What is the weather like outside?" which have answers like "It is raining."

Then there are questions like "What causes weather to change?" which have answers like "Read this book."

I'll walk through this, but I want to see you do some work.

Very simply put, having a registered trademark in country X entitles you to whatever rights the law of country X provides to registered trademark owners.

If you have a US trademark registration, then you can file a suit in a US court for trademark infringement, and the relevant US law will provide you with a suite of rights such as presumptive validity, ownership, national effect, and several other valuable advantages.

If you have a UK trademark registration, and nothing else, and you file a suit in a US court for trademark infringement, the court will look at you and go, "Huh?"

Also, under a treaty to which many countries are members, a trademark registration in one country will give you a right to file an application to register the mark in another country and obtain some procedural advantages.

What's missing from you question is "what is the relevance TO WHAT of which country a trademark is registered in?" If we are talking about ability to sue people in court for infringement, the relevance is huge. Trademarks are registered under the laws of various countries, and obviously those laws only apply to those countries.

Where people go wrong is that, with domain names, we are not concerned about the law of ANY country. We are concerned with application of the Uniform Domain Name Dispute Resolution Policy (UDRP).

The UDRP requires a complainant, from anywhere, to prove three things about a domain name, registered by a respondent, from anywhere.

1. The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights.

2. The Respondent has no rights or legitimate interests in the domain name.

3. The domain name has been registered and used in bad faith in relation to the mark.

Apply those three things to this situation:

(A) The domain name is Yayaya.tld. The Complainant is a mobile telephone provider in Brazil with a Brazilian trademark for "Yayaya" since 2020. The Respondent is Jose Santos of New York City in the US. The domain name was registered in 2023 and resolves to a parking page with PPC links to ads saying "Cartão SIM pré-pago", "Celulares no Rio de Janeiro" and "Internet sem fio".

You tell me. Tell me what you come up with for each of 1, 2 and 3.


Now apply those three things to this situation:

(B) The domain name is Yayaya.tld. The Complainant is a mobile telephone provider in Brazil with a Brazilian trademark for "Yayaya" since 2020. The Respondent is John Johnson of Minneapolis in the US. The domain name was registered in 2023 and the Respondent uses it for a blog about living in Minnesota.

Tell me what you get for 1, 2 and 3.

And, before you do that, please watch this movie clip from "Fargo':

Under the UDRP, we don't care where the complainant has a trademark, and we don't care where the respondent is located. What we care about is whether the facts support a likely conclusion that the respondent registered the domain name to take advantage of the complainant's mark. Period.

OK, I understand now.

In your A example, 1,2 & 3 are proved.
In your B example, 1& 2 are proved but not 3.

That clip is from one of my favorite movies. Its funny in a off-beat/strange way when its not supposed to be a funny movie.

 

[jberryhill]

In your A example, 1,2 & 3 are proved.
In your B example, 1& 2 are proved but not 3.

The range of "legitimate rights" under point 2, includes a range of stuff. Quoting from the Policy:

----

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

-------

Typically, we will look at whether the respondent's use is "illegitimate" relative to the trademark.

In B, the Respondent is making use of a common expressive phrase associated with persons in Minnesota, for a blog about life where use of that phrase is common. That is a legitimate noncommercial use of the domain name, and has nothing to do with the Complainant's mark. Now, sure, there are sometimes persons making what a panel will find "pretextual" use of the domain name. This happens when you have a very distinctive or famous trademark that is strongly associated with a particular mark owner, and someone comes up with a "legitimate use" to the effect that "MicrosoftWord has been my nickname for years" while posting the domain name for sale for millions of dollars, or some other dubious justification.

But, since all elements need to be proved, you reached the correct outcome in both instances. You are now ready to apply to WIPO for accreditation as a panelist.

 

[Vertibox]

But, since all elements need to be proved, you reached the correct outcome in both instances. You are now ready to apply to WIPO for accreditation as a panelist.

The area of inspection/quality control/enforcement of standards does appeal to me and I appear to have a natural inclination for it. Its something to think about, assuming you were being serious...

One more question that I have and which I hope you can answer.

I have some domains which I registered over 20 years ago and which I still hold. Since my registration of these names, companies with the exact same names as my domains have been created.
I don't have the original emails for the registration of these names because I have changed email addresses multiple times. I do have some of renewals orders emails however.

My question is, in the event of some compliant being made for any of these names, what proof would I need to provide as to the verification of my ownership before these companies were formed?

Is there some repository of registrant history for each domain that I or anyone can access? I considered subscribing to DomainTools but I am unsure if they provide this information. The DomainTools website is not very helpful about this aspect and they didn't reply to my email when I asked about this.
Someone told me DomainTools have moved away from supporting domain name holders.