question Unregistered Trademark. The death of domaining?

[WhoaDomain.com]

The title doesn't do the question justice.

How can a domainer profit when all a potential buyer can do is claim "unregistered trademark" and then "Lanham act" because you reached out to them to try and sell the domain?

When I see keywords like

Lifi
Beacon
Bit
Coin
Virtual
Reit
Etf
Biometrics
Ripple
Ethereum
You
Cheap
Tube

And all the other niches mentioned on here.

It's standard operating procedure for any domainer to reach out to potential buyers who have similar keywords in their domain.

All those people have to do now is just cry cybersquatting and take the domains legally? Saying they have been using the mark first?
Without a trademark?

Not only do we have to worry about registered trademarks. Now we have to worry about non registered trademarks?

Is there any protection for the domainer?

Worst case scenario? You can register domains but you can't do outbounds? Just sit and wait?

This is very bad for domaining.

What does this mean to domainers?

 

[jberryhill]

Why play a game if you haven't much of a clue about the rules

Now there's a good question.

I don't have time to give Avtar a personal course in trademarks. Then again, I'm not an expert in bird identification. Fortunately, one doesn't need to be an expert in bird identification to get a reliable idea of whether one might be looking at a penguin or a peacock, since they are easy to tell apart. The expertise comes in when it is a more difficult problem. So, if you don't know the difference between, say, a crow and a raven, then stick to penguins and peacocks.

But don't spend your time complaining, "Ravens and crows are both medium sized black birds! How can anyone tell the birds apart! This is madness!"

What I suggested to you earlier, and what you seem resistant to wrapping your head around despite probably hundreds of posts I've written on the subject here at namepros, is that you need to forget what you think you know about trademarks, and come to grips with a basic understanding of what a trademark is. You can click on the link in my signature here and it will lead you to - literally - hundreds of legal cases in which I represented a domain name owner (and the occasional trade mark owner) in a dispute. Many of those were cases in which a common law mark was asserted. So, please, just because a concept is new to you, does not make it either new or the "death of domaining".

But what do I know, right? I'm just a guy who studied this stuff for a long time, and has been exclusively working in intellectual property matters since 1992, and then fairly exclusively in domain/trademark matters since 1998. Feel free to ignore me and believe whatever suits you.

Trademarks are hands off now unregistered trademarks too?

I don't know what "now" is doing in your sentence. Common law trademark rights are certainly enforceable. Again, your basic problem arises from not having ever reflected on what a trademark is. In the US and other common law jurisdictions, a "trademark" does not come about from applying to a government office for a certificate.

A trademark arises from the use of a word/symbol/logo/whatever in commerce on goods or services which provides the function of distinguishing those goods or services from those of others in the relevant market for those goods or services. If you want to, you can then go obtain registration of that trademark, which makes it easier to prove certain elements of a claim if you want to sue someone. In the US, if you sue someone for trademark infringement using a common law mark, you first have to prove that you have a valid trademark, and that the other side knew about it. If you have registered your mark, then the registration serves as presumptive evidence of the validity and ownership of the mark. Registration also provides 'constructive notice' of the mark, as your competitor is deemed to have known about the registration. So, registration provides a lot of advantages.

What registration doesn't do, and never has done, is establish a trademark in the first place. That's been your primary mental block for, gosh, as long as you've been posting nonsense here.

So, let's take your street address example.

There is an interesting building in New York City at 20 West 34th Street. Now, "20 West 34th Street" is of course a street address, and that's pretty much all it is. I'm pretty sure that, so far, you have no idea what is at 20 West 34th Street. Neither did I until a few moments ago.

However, the building at 20 West 34th Street is a very famous building, with a very well-known name, owned by a private company which provides leasing and other services that it advertises using the name of that very famous building. You probably have no idea at all what is at "20 West 34th Street", but I guarantee you have heard of the famous building, the name of which is certainly used as a trademark.

In that example, "20 West 34th Street" is merely a street address, with no particular significance to anyone. It is not used as the name of the building. It is not used in advertising promoting the building, the leasing services, or indeed the tourist attraction which is heavily promoted as the "Empire State Building".

Word Mark EMPIRE STATE BUILDING
Goods and Services IC 036. US 100 101 102. G & S: REAL ESTATE SERVICES, NAMELY THE MANAGEMENT AND LEASING OF REAL ESTATE. FIRST USE: 19310501. FIRST USE IN COMMERCE: 19310501
Registration Number 2413667
Registration Date December 19, 2000

Now, there are a couple of things worth noting. Since you've probably read virtually none of the hundreds of posts I've written here, one important thing to note is that they claim to be the successors of people who have been at it since 1931. One of the things that helps make a trademark distinctive is how long the mark has been predominately associated with a particular source of the goods or services. So, something like "American Airlines" which is American, and an airline, has become distinctive since they too have been at it since the 1930's.

Okay, so, let's take a stroll uptown from the Empire State Building and consider something like 30 Rockefeller Plaza.

30 Rockefeller Plaza doesn't have another name, but is frequently shortened to:

As "30 Rock", it is well known as the headquarters of NBC, and was used as the name of a TV series spinoff from Saturday Night Live. It was a TM for the series title, for sure, and may well be used by the building management as one.

Another example is the building where my former firm is located. I used to work at 1601 Market Street in Philadelphia. It's across the street from an office/condo/shopping complex and tower called "Liberty Place". Now, "Liberty Place" is certainly used by the folks across the street as a mark for their various services, but what about 1601 Market?

Well, okay, spend a minute (since I sure am) taking a look at this website, and tell me what you think:

http://1601-marketstreet.com/

Let that front page load and what do you see? Would you say that "1601 Market Street" is used:

(a) merely as an address to indicate where the building is located, or
(b) as an indicator of the brand of leasing services available?

If you have a hard time choosing between (a) and (b) there, then do yourself a favor and find another hobby. Perhaps birdwatching might suit you better.

And if all this is "TL;DR" for you, then stop asking impulsive questions if you don't want answers.

 

[bmugford]

I know you have posted some TM topics in the past as well, but I think you are a bit confused.
This stuff is not black & white and TM have classes.

There is a big difference between a TM and an enforceable TM when it comes to a generic use. You really think terms like "You", "Cheap", "Virtual", "Coin", etc. are protectable as stand alone generic terms, for the generic use?

95% of TM squatting is obvious. Just look at a list of UDRP filed. The vast majority are slam dunk cases.
Some fall into the grey area, which is a case by case basis.

I think you are grossly overestimating the actual risks.

Brad

 

[Dave]

The following is my understanding of TM law. I am by no means an expert so please do not regard the following text as advice, I'm merely expressing my understanding of the matter.

Trademarks have classes for a reason. The same word or phrase can be trademarked multiple times by multiple parties all with different operating trademark classes.

I also believe trademarks are restricted to their jurisdiction (usually country). For example if you have a trademark registered in the UK it is only applicable to UK and not other countries.

Domain registrants who own a domain name whereby the keyword(s) are also a registered trademark only need to be concerned in anyway if any of the following statements are true:

• The registrant created the domain name after the trademark had been filed or status is approved/live
• The contents or website of said domain are that of the class or classes a TM operates under. So for example if I have a trademark for 'Chunky Cheese' and I sell cheese, you can't be operating under the name Chunky Cheese whilst also selling cheese, within the same jurisdiction.
• If you have content of any kind conflicting with TM classes. This includes advertising, parked pages and such.
• If you knowingly purchased the domain with the sole intention of profiting of the trademark or to sell directly to a trademark holder

If any of the above is true I think it could potentially be warranted as bad faith.

Let's expand upon the example above. If you happen to own ChunkyCheese.com and it doesn't resolve, but another party has a registered trademark, they can't automatically claim they have any right to said domain name. They need to prove you are somehow using the domain in bad faith first. If you're not then in majority of cases you have nothing to worry about.

Please note again that what I've written here is my personal understanding of the subject matter at hand. This is NOT advice. I am by no means a legal expert of any kind. I'm merely expressing my understanding.

I think @jberryhill and I'm sure others are likely to have way more knowledge than myself of TM law.

I too would appreciate others input on this.

Thanks

 

[jberryhill]

Nailed it, Frank.

All of the others have some kind of non-specific meaning in a trade sense.

Even something like "ETH" has multiple meanings:

https://www.acronymfinder.com/ETH.html

...including things for which it is a generic indicator.

And "lifi" is obviously not associated with a single vendor of products using light for computer networking, as a simple Google search shows.

Now, that's not really about whether "Ethereum" is, or is not, a trademark. But as a first pass, "is this more likely to be a penguin or a peacock" kind of question, an initial important observation is that it is not a dictionary word or a common acronym, but it is an invented word used by its creator to refer to one thing in particular.

And, again, that's not to get into issues of whether it is a trademark, whether there is some sort of fair use, or implied intention for others to make nominative use, and all sorts of complicated theories that one can get into. But from a very rough-cut "I'm not too sure about trademark laws, but that name stands out from the others as 'different' in a way that might be significant", that's exactly the kind of observation a domainer should get skilled at making.

I'll say a little more about ETH, though. As Frank probably knows, ETH is a very well-regarded technical university in Switzerland. So, if someone wanted to register ETH.tld, then it would be important to make sure that the domain name was parked in association with one of the meanings of ETH as a generic acronym (i.e. a short indicator for 'ethernet'), or pitched for sale as a "three letter domain name" per se, to avoid any potential for confusion with the university in Switzerland.

Another thing that can matter is that if the registrant lived in Zurich and had a technical degree, it could be a very different circumstance than if the registrant is a chef in Chicago. A UDRP panel might infer that a technical graduate in Zurich is more likely to know about ETH the school, than someone with no reason to know. All the facts matter in these things.

 

[jberryhill]

“All content © 2019 ViewDNS.info”

While I don’t quite understand the point of your data dump, I love that you also copy the notice that says not to copy their output.

Extra class points there, Avtar.

 

[alcy]

sit and wait?
lol
sit and wait is what 95% of domainers do.
though mind you the 5% that do outbounding are pretty firm on it.. and go as far as to say that if you're not doing outbound then you ain't a domainer... so don't be like them lol

you can still be a domainer and not do outbound

your title is misleading mate.
there are 434343 threads on namepros in past 10 years that say domaining is death.. yet here we are...

maybe it should say "is outbound dead? maybe."

and yes I agree with you.. you do outbound.. you win some.. get few more sales.. but you expose yourself to stuff too... in the end, why its so hard to understand for people that if someone wants your name, they'll come and find you... the only requirement is a sale lander...

your other option (I mean in general not you) is to bug the living crap out of people via outbound.. including your fellow domainer friends from np... and then get tm letters next day.

 

[Joe N]

Thanks Brad believe me Brad . As someone who has surrendered several domains to TM holders. Plus as someone who actually registered a trademark myself for my company. I know about the goods and services.

What triggered me posting this domain?

Recently registered an exact match address like

123broadway.com (for example)

I read an article somewhere they will build something expensive on it.

Reached out. Waited. Now I get sent threatening email to surrender domains?

Trademarks are hands off now unregistered trademarks too?

This is why I say domaining is dead.

I'm sure I'm not the only one on here that's done a "run and gun" when some new hot key term pops up like VR or Bitcoin or whatever.

If all a buyer has to do is cry cybersquatting because you tried to sell them a domain that contains keywords that they have in their LLC or are an exact match for the address of their development or in their domain.

What hope is there for the domainer? We will all just end up surrendering domains left and right because the risk of losing a lawsuit is too great.


And if you can't do outbounds for risk of getting sued for cybersquatting for profit then again what hope is there?

Might as well pack up and close up shop. Because buyers have figured out how to get our domains for free.

Okay, but... if you're registering 123Broadway.com and then trying to sell it to 123 Broadway... you're kind of asking for it. No?

I've been doing pretty steady outbound for close to three years now, and the worst response I ever got was, "I don't like the idea of paying someone a lot of money for a domain name." But I stick to generic names of goods and services when I'm doing outbound.

If you want to avoid conflict, avoid marketing conflicting names.

 

[Kate]

I think you are focusing too much on the law. Nobody knows all the laws.
So common sense is your guide in life. For the more tricky situations or when you're in doubt you consult an expert or you reconsider your plans. Taking a break from domaining is an option worth considering too
You say you surrendered several domains to TM holders, so you're still not getting it.

And contrary to what you say in your opening post, no it's not "standard operating procedure for any domainer to reach out to potential buyers who have similar keywords in their domain".
In fact this is a slippery road if you don't know what you're doing.
If you are confused just stick to generic domains that can be used for their generic meaning.

As @jberryhill would say, try Google first. Type the name and see what you find - or don't find. Do you get matches for a famous company or something. You might still have a legitimate purpose for the name regardless, but then try not to step on their toes. Is that difficult ?

Before you even ponder the legalities of your actions, you could simply stay away from garbage/TM domains that have only one possible end user. Spend your money wisely, buy domains that are assets and not liabilities.

Maybe you could subscribe to UDRP rulings. Read the decisions, parse the arguments and you should be able to figure out what works and what doesn't. But @jberryhill already gave you so much advice, for free. It's worth thousands of dollars.

There is a saying that a wise man learns from his own mistakes, a genius learns from the mistakes of others. So what have you learned from your own mistakes so far ?

 

[Kate]

Just buy better domains. Non-infringing domains.

I have bought and sold hundreds of domains in two decades, never run into such problems. It's only a minority of domainers who get in trouble, that could have been avoided most of the time.
If you have good names you may still have to deal with jealous people, tire kickers etc on the occasion, but people don't send their lawyers or (launch UDRP) on a whim.

It's not that easy for an adversary to prevail against you if you don't give them the ammo in the first place.

 

[forge]

You've started threads before on this same topic and J. Berryhill offered you a reality check. Yet you come back for more.

https://www.namepros.com/threads/has-anyone-ever-contacted-tm-holder-to-sell.1129623/

Frankly, the title of your thread is just more clickbait bullshit. But don't feel bad, clickbait has been trending on NP for some time now.

 

[Dave]

Thanks . I have to add that the key to the unregistered trademark owners winning case would be if the domainer reached out (innocently or stupidly enough) to the perfect buyer.

I mean what domainer would not reach out to the perfect buyer for the domain they properly curated and chose to register for the sole purpose of selling to?

I mean isn't that what domainers should do? Register the outbound.

Please bear in mind I am talking about an unregistered trademark here not a registered one.

I agree with @bmugford. I think you're being overly cautious for little reason. I come across many posts like this on here or something along the lines of "your name banana.com is trademarked! Grace delete it now!". It really isn't as simple as that at all.

I'm by no means an expert, but again I must reiterate that in my opinion trademark holders don't have an automatic right to a domain name.

 

[BaileyUK]

Why not spend just a few of those hours that you spend searching and registering domains getting to grips with the 'Basics' of TM Law, It all makes for reasonably common sense. Besides, there's plenty of businesses out there that themselves don't have much of a clue about what their protection rights are and are just as likely to over-reach on that afforded protection.

Why play a game if you haven't much of a clue about the rules (analogy)

 

[jberryhill]

What's stopping someone whom you've reached out to from hiring a hungry TM lawyer to threaten you? There is no cost to them is there? The lawyer will just pass on the cost to the defendant.

The words just come flowing out at random.

Let's see if we can understand you.

You are talking about domainers who can't afford a lawyer. A trademark owner is going to hire a lawyer who works for the trademark owner for free, because by some kind of magic, the lawyer is going to get money out of the domainer who can't afford a lawyer.

Is that seriously what you are attempting to say in the hope that it makes sense to other people?

If the domainer doesn't have enough money to pay a lawyer, then where is the magic money going to come from to pay the trademark owner's lawyer in your weird scenario?

Lawyers work on contingent fee arrangements in the kinds of situations that Brad mentioned - personal injury suits where there is either a deep-pocketed defendant or an insurance company on the other side. The reason they do that is because they can generally negotiate a settlement that makes it worth their time - BECAUSE THEY KNOW THERE'S A LOT OF MONEY ON THE OTHER SIDE.

There is no trademark lawyer who is going to work for free to threaten individuals in all sorts of jurisdictions who may not have a pot to piss in, and somehow get money out of people who don't have any.

Explain this a little further. Let's use an example. Brad has a trademark on BLAH. You registered blah.tld and offered to sell it to Brad. Brad gets ahold of me and I say, 'No problem, Brad, lemme do this for free!"

From the time I do that, to the time I get money out of you, please explain to me the steps in between those two things.

 

[jberryhill]

So the choice really is either hand over the domains in question or call their bluff and simply ignore their threat?

That's not the full range of possibilities. Another option is to find out whether or not they actually have a reasonable chance of success and, if not, to explain to them quite clearly and forcefully that they will not win, and it will be a costly mistake for them.

Of course, that option requires being correct.

But, no, lawyers aren't writing c&d letters on contingency, and you still haven't managed to realize why it makes no sense to do so.

I try to help people understand things by asking questions, because things that people figure out on their own manage to stick with them better than things that you simply tell them.

But you blew off my question on what is the sequence of events that the lawyer actually gets paid in your "contingent fee threat letter" scenario. If you'd bother to actually think about it, you'd realize why it doesn't work.

First off, if things worked the way you believe they did, then the WORST thing you can do in response to a c&d letter is agree to transfer the domain name. If you do that, then how does the lawyer get paid?

But, secondly, you think there is a lawyer somewhere who is going to file lawsuits against people who don't have much money, in courts all over the nation, and then get judgments and then enforce those judgments, and having put months of effort into that, find out that the people they are suing don't have any money anyway?

Back to the point above however, let's take everything I've said about what a trademark is, and take your hypothetical conversation above:

----
"Oh I'm gonna develop a $25 million dollar property on 123 Main Street.

We're going to build a website yadda yadda".
---

"I'm gonna..." "We're going to..."

What do those phrases suggest about whether or not they have a trademark?

Another way of getting at the same point is to answer this question: For what goods or services does someone saying "I'm gonna..." We're gonna..." have a trademark?

 

[hawkeye]

When faced with a reasonable threat like that plus lack of TM law knowledge what choice does a tiny domainer have?

It costs them nothing to hire some hot shot lawyer to threaten you.

Since 'you' always seem to be in or have some kind of TM drama quagmire with the domains you reg, why not do the same and defend yourself and your domains? (it costs 'nothing'!)

or..

Stop regging TM names. There's plenty of other types of domains to reg and sales to be had.

or..

Start another thread in a few weeks complaining (once again), about your issues with TM domains.

 

[biggie]

It's standard operating procedure for any domainer to reach out to potential buyers who have similar keywords in their domain.

that is not my sop.net

imo….

 

[golan]

 

[Joe N]

Holy thread pollution, Batman!

@Avtar629 - Instead of going to all this effort, have you checked to see how often address domains sell in the aftermarket?

I have no idea if they sell or not... I just think all this TM business is a moot point if the name is a dud anyway.

 

[jberryhill]

I just think all this TM business is a moot point if the name is a dud anyway.

Bingo.

Wouldn't these agencies be liable for TM infringement?

Avtar, if the idea here is that someone is going to sift through all that crap and figure out which ones might or might not be a trademark, consider the invitation declined. A large number of the domain names you posted aren't even addresses in the first place but are <telephone area code> + <generic>. For example "415carpets" would refer to carpets in the San Francisco area.

I get that precision thinking and making fine distinctions aren't your thing. But aside from whether or not any of the things you posted are, or are not, used as trademarks, there is also the question of how these other entities respond when a claim is brought to their attention.

Those familiar with what I've done over the years know that I've worked for many of the largest and most successful domain portfolio owners.

If you have thousands of domain names, which you may have accumulated through portfolio purchases, automated processes and other mechanisms not amenable to a fine-grained review then you will attract a fairly regular stream of trademark claims. What you do when you receive one is you investigate the claim, make a decision, and where the claimant has a decent point, you transfer the domain name to them.

Do you think I've won hundreds of domain disputes because I have magical defense powers, and can win a case no matter what the facts?

Or do you think that maybe I'm good at advising domain registrants on which ones are worth fighting and which ones are not?

As far as my current thread. Can a domainer's defense be that the address exists in other states?

Okay, okay, so the way you're going to do this - with outbound sales, no less - is that you are going to find a property where the address is used by the developer or owner as a mark for the property, say "77SunsetStrip.com". Let's further assume that address is an office tower in Los Angeles which is used as a mark, and that they also own the rights to the old TV series by that name and use the theme song to advertise it. Additionally, the address corresponds to an Exxon gas station in Phoenix, and a suburban ranch house in a low income section of Fort Lauderdale.

You are going to send a targeted solicitation to the people who own that property in Los Angeles offering to sell them a domain name they don't want. Annoyed at your spam, they are going to tell you to transfer the domain name because they are using it as their trademark.

Your defense is going to be "but it's a gas station in Phoenix and a ranch house in Florida!"

My first question is going to be, "Did you try to sell the domain name to them too?"

And if your answer is no, then it's going to be pretty obvious that your "defense" is just bullshit. If the address is in a lot of places, then why were you trying to sell it to only one of them?

Whatever point you are trying to make with geographic range on common law marks is a mystery to me. If you are soliciting business in that geographic area - i.e. by writing to these people in the first place - then you are bringing yourself into the relevant jurisdiction by directing your activity there.

In any event, I believe I've wasted enough of my time on this one.

 

[bmugford]

My real question which I did not ask is...

What's stopping someone whom you've reached out to from hiring a hungry TM lawyer to threaten you? There is no cost to them is there? The lawyer will just pass on the cost to the defendant.

The threats always end with we can come after you from anywhere between $5,000-$100,000.

This is not personal injury law, it is TM law. You are not going to generally see large settlements.

I can't imagine many good lawyers are going to take a case on some type of contingency basis.
Lawyers, like any other profession, want to be compensated for their time and abilities.

But your premise is correct, and applies really the to legal system in general. Merits of a case don't always matter. You often get the amount of justice you can afford. It might be a messed up system in many ways, but it is the same in every field.

Brad

 

[jberryhill]

I don't have the time nor the patience. this situation is just leaving a bitter taste in my mouth about domaining.
So much so that I'm in the process now of liquidating my domains and just getting out of this.

 

[JayT]

@Avtar629 I read some of your posts and you are always asking "is this right"? Somehow you don't seem to know right from wrong, or try justifying doing some squatting somehow, IDK. Normal people just do what they feel is right and not worry about the outcome because they know they are fundamentally OK.

And technically, reaching-out, as you put it is an unsolicited offer, aka SPAM, no matter how much they might need the name. You already looking bad in URDP in any circumstance.

 

[xynames]

It’s rare that a common law TM holder would sue. Would need to sue basically only if there is local infringement and no one else is using the mark in that area. Couldn’t get damages or attorney’s fees. Would sue just to stop you from infringing.

 

[jberryhill]

Couldn’t get damages or attorney’s fees. Would sue just to stop you from infringing.

Are you suggesting that registration is a requirement for an action under 15 USC 1125(d), and/or that the discretionary $100k damages under 15 USC 1117(d) would not be available in such an action? Neither of those statutes require registration, so I’m curious to know how you believe they do. (In the final judgment of the somewhat tortured Jysk v. Dutta-Roy litigation, statutory damages were awarded on an ACPA claim premised on a common law mark)

ACPA suits are not infringement actions.

Additionally, Avtar’s primary issue here seems to be “street address” domains in US municipalities into which he is intentionally directing solicitations. We don’t know where Avtar resides or does business, but if the “local area” in question is, say, New York City, then the SDNY is as good a court as any.

 

[jberryhill]

If they may fit the issue into some other light, such as the ACPA which would additionally require bad faith use, there might be other remedies.

Well, the Anti-Cybersquatting Consumer Protection Act, 15 USC 1125(d) is pretty much what domainers tend to get threatened with and sued for, and a registration is not required. Domainers are typically not using the domain name for anything in particular that would rise to the level of an infringement action, so that's pretty much beside the point.

Additionally, the ACPA, unlike the UDRP, does not require bad faith use.

----
15 USC 1125

(d) Cyberpiracy prevention

(1) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that -

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
------

The relevant acts are to possessing the requisite intent and "registers, traffics in, OR uses". Simply registering the domain name with the requisite intent is a sufficient act.

If there were any doubt about whether the ACPA requires "bad faith use" then it includes a list of non-exclusive "factors" which may suggest bad faith:

------
(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
...

(III)
the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
...
(VI)
the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
--------

So, registering a domain name that corresponds to a distinctive mark and offering to transfer it to the mark owner for financial gain without having used the domain name for any bona fide purpose, is entirely sufficient to make out a claim under the ACPA, which is the most common cause of action of concern to domainers under US law. It does not require a registered mark, nor does it require bad faith use of the domain name.

Concerning monetary damages, again, no registered mark is required, as demonstrated in the case which I cited which (a) involved a common law mark, and (b) resulted in monetary damages under the ACPA. The relevant statute on damages under the ACPA is 15 USC 1117(d):

-------
(d) Statutory damages for violation of section 1125(d)(1)

In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
--------

Would a complainant and their lawyer be at risk for misrepresentation if say they agreed to sign an agreement in which I handed over the domains in question so long as they agree to sign the agreement that states.

You know, I've been at this a very long time, and one of the things that makes me a cranky old person is seeing people re-invent the same broken wheels over and over again, in search of the magic anti-cybersquatting liability bullet.

You know all of those prostitution booking websites that used to operate in the US, like Backpage or Craigslist, where the "escorts" would have stuff like:

"By agreeing to use this booking service, you warrant that (a) you are not a police officer and (b) you are not contracting for prostitution services... etc., etc., etc....."

It's pretty much like putting up a neon sign flashing "PROSTITUTES HERE!"

shouldn't you CHECK first to see if there are other street address that matches yours in other parts of the USA?

If they have a trademark, it's not relevant.

Look, if you register the domain name Berryhill.tld and you try to sell it to the owners of US TM Reg. No. 3898846 for "BERRYHILL", then it really doesn't matter if there are thousands of people named Berryhill in the US. THEY are the ones that have a trademark for "BERRYHILL" for restaurant services, and THEY are the ones that you tried to sell it to.

Just because the address exists somewhere else doesn't mean that it is not a trademark if these people are USING IT AS A TRADEMARK.

Does it really boil down to. I reached out to complainant to sell them the exact match to their address? case closed?

is it really that simple?

No, it's not that simple, but you are not interested in attempting to understand why.

----
"Oh I'm gonna develop a $25 million dollar property on 123 Main Street.

We're going to build a website yadda yadda".
---

"I'm gonna..." "We're going to..."

What do those phrases suggest about whether or not they have a trademark?

Another way of getting at the same point is to answer this question: For what goods or services does someone saying "I'm gonna..." We're gonna..." have a trademark?