What do you do if you reg'd a domain with a TM on it by mistake?

[markfromslo]

I always check for trademarks before registering a name. But today one came up for hand reg that was so good, and seemed so generic as to be impossible to have a trademark, that I went for it without thinking to check. It's a name in the legal sector as generic as "Criminal law" would be. The TM in use is not in obvious area of how someone would use this the domain name.

So I will not put it up for sale for now. But I'm wondering, what do some of you do if you find yourself in this situation? I suppose I could delete it from my account. But if I'm not using it and not building anything with it and not trying to sell it, is there infringement anyway? Would the worst case be for me to be to simply have to give them the domain name?

 

[Leo2k]

Infringement would happen only when you use the domain for same or similar business related to the trademarked one. If the domain is going to be used for a different business purpose that will not confuse people this domain with that business, it will not infringe. *However, do extensive research on that domain and consult with any legal person.

 

[markfromslo]

Infringement would happen only when you use the domain for same or similar business related to the trademarked one. If the domain is going to be used for a different business purpose that will not confuse people this domain with that business, it will not infringe. *However, do extensive research on that domain and consult with any legal person.

Along those lines, what if it were on a sales landing page with no ads (I never allow ads), or that generic Afternic ns5 page that says "this name may be available for sale", without a price. Would simply having it for sale be a problem?

 

[NickB]

Worst case scenario, if it happened to me I would set a reasonable BIN price on the lander, no make offer = no chance for them to engage in conversation / threats and hope they hit that Buy now button......

If they or someone contacts me via another channel with threats of legal action I would just hand it over or delete the domain - if nothing happens over the 12 months then I'd drop it.....

My understanding is that it would not matter one bit if the business / domain was being used in the same niche / classification or not - if the domain in question is "confusingly similar" then they have the potential to take it away from you via UDRP

I think @Leo2k has got it wrong with their explanation......

 

[lock]

A law term at that. Get a lawyer to find out if can sell it to another lawyer and that could be a problem again.

 

[Revisiting]

It isn't to difficult to get your head around trademark law. Most of it actually makes common sense. The variables really only come about on the Interpretation by legal decision makers. As you would expect they are mostly about the understanding of infringement. I would never give up a domain just because a TM owner requests. (Though I would request their reason/grounds) Overreach by TM owners is fairly common. You would be surprised by just how naive TM holders are about their legal rights. Don't forget the same wording can have a dozen or more Trademarks by different entities and in different classes
Take the time to get a good grip on the basics - you wont regret it. It will also give you a good understanding of what makes a 'Brandable' as opposed to a common descriptive

 

[Revisiting]

Little to late in the editing (of the above) to also mention Uniqueness, Historical usage, business reach etc but, it all comes together like a good jigsaw puzzle when you read-up

 

[markfromslo]

It isn't to difficult to get your head around trademark law. Most of it actually makes common sense. The variables really only come about on the Interpretation by legal decision makers. As you would expect they are mostly about the understanding of infringement. I would never give up a domain just because a TM owner requests. (Though I would request their reason/grounds) Overreach by TM owners is fairly common. You would be surprised by just how naive TM holders are about their legal rights. Don't forget the same wording can have a dozen or more Trademarks by different entities and in different classes
Take the time to get a good grip on the basics - you wont regret it. It will also give you a good understanding of what makes a 'Brandable' as opposed to a common descriptive

Do you have any suggestions on some good reading on the topic?

 

[iTesla]

I check TM of domains only if the domain was registered more than 20 years ago and if it's very good, because newer domains don't have TM's most of them, I got a jewel of a domain from 1999 dropped from a popular domainer, forgot his name, I found out there is a TM for this name and it was abandoned one year before the internet went live in 1984 so now it is dead TM and I hope I m lucky to use the domain for my own website.
Also recently I dropcatch a very short domain from 1999 it was registered, not sure how no one at Drocatch did not see this domain, maybe because i m cursing every day Dropcatch and it helps me, I forgot to check TM for it, will have to look, else you can get into trouble.
edit: if they have live TM for your domain it's better to delete the domain if you have time to get a refund, else just don't renew it any further.

 

[markfromslo]

I check TM of domains only if the domain was registered more than 20 years ago and if it's very good, because newer domains don't have TM's most of them, I got a jewel of a domain from 1999 dropped from a popular domainer, forgot his name, I found out there is a TM for this name and it was abandoned one year before the internet went live in 1984 so now it is dead TM and I hope I m lucky to use the domain for my own website.
Also recently I dropcatch a very short domain from 1999 it was registered, not sure how no one at Drocatch did not see this domain, maybe because i m cursing every day Dropcatch and it helps me, I forgot to check TM for it, will have to look, else you can get into trouble.
edit: if they have live TM for your domain it's better to delete the domain if you have time to get a refund, else just don't renew it any further.

Here's a question for you: I am looking at a name I can buy right now at a good price. It sounds like the name of a popular app/website in the tech area, a market leader in the space. The spelling begins the same, and then the characters at the end vary. It is pronounced the same. For reasons I can say here or it will give it away, it could be a valuable domain name. I checked and there is no TM for it. I see a couple Abandoned applications for the name, and one of them is from this company. It was filed and abandoned for being late in responding, a couple years ago.

Edit to add: Of course, not having a trademark filed, doesn't mean you don't have a legal trademark. So I think I know the answer to this question.

At the moment I'm ignoring it, but it's gnawing at me.

 

[iTesla]

Here's a question for you: I am looking at a name I can buy right now at a good price. It sounds like the name of a popular app/website in the tech area, a market leader in the space. The spelling begins the same, and then the characters at the end vary. It is pronounced the same. For reasons I can say here or it will give it away, it could be a valuable domain name. I checked and there is no TM for it. I see a couple Abandoned applications for the name, and one of them is from this company. It was filed and abandoned for being late in responding, a couple years ago.

Edit to add: Of course, not having a trademark filed, doesn't mean you don't have a legal trademark. So I think I know the answer to this question.

At the moment I'm ignoring it, but it's gnawing at me.

They may say "Confusing Similarity" and UDRP you, but it depends without knowing what is about is hard to say. I have some brand domains that are created out of dictionary words with the addition of one or two letters, they sound similarly to dictionary word of those developed websites/businesses, but I can explain in the UDRP easy that i have more than 500 such domains and I did not target the dictionary word or mark, if it even exists, believe me they will be stuck forever by surprise.

There are people who register domains after someone got successful building a product or service, one example ChatGPT of Openai,com, that domain is Top now because of it's content/service not because of the domain name itself and they even not operate from ChatGPT,com.
Stay away from what other people have build and now are popular or in the trend, that is their achievement.
Better to concentrate on creating something new that startups will buy from you and get it started, so they become popular and in trend using your domain name.

P.s. i m no legal entity, you can tag jberryhill if he have time he will reply, although I not have advocacy school I find such turns that will take the UDRP by surprise if I ever get one.

 

[markfromslo]

They may say "Confusing Similarity" and UDRP you, but it depends without knowing what is about is hard to say. I have some brand domains that are created out of dictionary words with the addition of one or two letters, they sound similarly to dictionary word of those developed websites/businesses, but I can explain in the UDRP easy that i have more than 500 such domains and I did not target the dictionary word or mark, if it even exists, believe me they will be stuck forever by surprise.

There are people who register domains after someone got successful building a product or service, one example ChatGPT of Openai,com, that domain is Top now because of it's content/service not because of the domain name itself and they even not operate from ChatGPT,com.
Stay away from what other people have build and now are popular or in the trend, that is their achievement.
Better to concentrate on creating something new that startups will buy from you and get it started, so they become popular and in trend using your domain name.

P.s. i m no legal entity, you can tag jberryhill if he have time he will reply, although I not have advocacy school I find such turns that will take the UDRP by surprise if I ever get one.

Yeah, I think staying away is the best bet. There are plenty of other opportunities and life is too short for legal hassles.

 

[Revisiting]

If you can identify the TM and its popularity and reach then don't register the similarity just because it's there.. If you want the basic question. It's, am I knowingly and willingly stepping on a Trade-mark holders TOES. If you know you are- don't do it.

If on the other hand you have a valid business plan - So distanced from the TM holder that nobody could be confused But It doesn't sound like that to me.

Nobody, with any sense goes out of their way to seek these type of domains - and they certainly don't sell anyway

 

[Revisiting]

Do you have any suggestions on some good reading on the topic?

I can give you the most practical answer. The very old posts by Mr John Berryhill. This particular lawyer was a very prolific poster many, many moons ago. (not necessarily here at NP) He would take the time to explain concepts, legal jargon and above all, use a particular case and judgement to emphasise the particular issue domainers would find helpful. Over those many years there was a whole wealth of knowledge that could be built-up. He would not waste his time with repeats of the same question (only referencing past post) then his next post would deal with another legal concept again with examples. this he willingly done for many years. Those of us that grew in domains with the benefit of that shared knowledge, I think are eternally grateful. Don't forget this time was seen as the Wild, wild West of the Internet. lots of ground to be fought over.

I haven't found it necessary to do it myself. But there may be some old archive material out there that can be searched, The big problem being that many of the old sites that Mr Berryhill posted on are just not there anymore. He certainly had a Professors way of getting his educational point across.

he was wonderful at pointing out particular nuances as to why similar cases resulted in different outcomes. I'm sure there are many books or postings out there UDRP site for instance, where you can read the case notes and judgements they are certainly one of the best sources to build up knowlege

 

[bhartzer]

If it was a hand-reg domain, then frankly I would just go in and delete the domain at the registrar. Take the $10 loss and move on.

 

[markfromslo]

I can give you the most practical answer. The very old posts by Mr John Berryhill. This particular lawyer was a very prolific poster many, many moons ago. (not necessarily here at NP) He would take the time to explain concepts, legal jargon and above all, use a particular case and judgement to emphasise the particular issue domainers would find helpful. Over those many years there was a whole wealth of knowledge that could be built-up. He would not waste his time with repeats of the same question (only referencing past post) then his next post would deal with another legal concept again with examples. this he willingly done for many years. Those of us that grew in domains with the benefit of that shared knowledge, I think are eternally grateful. Don't forget this time was seen as the Wild, wild West of the Internet. lots of ground to be fought over.

I haven't found it necessary to do it myself. But there may be some old archive material out there that can be searched, The big problem being that many of the old sites that Mr Berryhill posted on are just not there anymore. He certainly had a Professors way of getting his educational point across.

he was wonderful at pointing out particular nuances as to why similar cases resulted in different outcomes. I'm sure there are many books or postings out there UDRP site for instance, where you can read the case notes and judgements they are certainly one of the best sources to build up knowlege

Thank you.

 

[Revisiting]

The TM in use is not in obvious area of how someone would use this the domain name.

This is the part that should see you well safe. any use or promotion of the domain should be well within its generic descriptive and Not stray into the TM category. I would never use any sort of Auto-listing (with Ads) as this is likely to pick-up on the popularity of the TM holders services.

And of course , even without knowing the domain/term it's probably a good example how you can Trademark a common descriptive OUTSIDE of its regular generic use. I very much doubt the TM holder would come after you, they are probably fully aware that such action would be classed as Overreach providing your use sticks with its generic and common understanding. IMO.

Any conflict would normally only arise if The TM holders services and product had a global reach and had already established a strong association.

 

[forge]

The very old posts by Mr John Berryhill. This particular lawyer was a very prolific poster many, many moons ago.

@jberryhill going to love this.

 

[Revisiting]

Ha, ha. Yes I'm aware that Mr Berryhill does occasionally still post once in a while. So maybe not so much of the 'Very old'

Back in the days though, there was a real education to be had, as debates about UDRP* decisions arose.
* Uniform Dispute Resolution Policy for those new to domains.

Just input UDRP into Google for those want a good understanding of TM law as it applies to domains. And many other elements of Domain disputes. You'll soon learn It's not an 'Exact Science' More like an educated guessing-game

 

[Revisiting]

And Dare I add, It is as you'd expect, one where those with the most clout and money (Best lawyers) usually prevail. Still it's a worthwhile knowledge base for those that may want to respond to initial claims of TM infringement. The knowledge has certainly helped me make a few good sales where the initial contact mentioned standing and valid TM's in that first approach. It usually goes quiet for a while - before the 'How much' comes into the correspondence.

I am pleased to say, I've never knowingly acted without due diligence. All have been where I had valid grounds for the registration. even when the domain goes straight-up for sale. So I've stayed on solid ground.

Probably hard to do that , If you don't know what the basics are in the first place

 

[markfromslo]

@jberryhill going to love this.

I've actually just him for consultation a couple of times in the past. He's very nice and very fair i his pricing. And of course very knowledgable.

 

[markfromslo]

Ha, ha. Yes I'm aware that Mr Berryhill does occasionally still post once in a while. So maybe not so much of the 'Very old'

Back in the days though, there was a real education to be had, as debates about UDRP* decisions arose.
* Uniform Dispute Resolution Policy for those new to domains.

Just input UDRP into Google for those want a good understanding of TM law as it applies to domains. And many other elements of Domain disputes. You'll soon learn It's not an 'Exact Science' More like an educated guessing-game

There is one situation that I come across most often when looking at a name with a trademark. If the trademark exists and is not used in an obvious area of use, I wonder if I can buy the name (and I'd make sure my landers have no ads--all my do not). As a made-up, stupid example, let's say there is a trademark on "Tech Express" and the domain TechExpress.com is available. The trademark owner is using it for a chain of restaurants. Can I buy the name since it can be used in other areas, and of course in particular the tech industry?