question What if a startup used the name of my domain?

[bluemeteor]

Instead of buying my domain, what if they decided to use the same name of my domain to build a TM and reg some less domain or .ai or Sth. And had no intention to buy my .com. Then no one could use my domain, thus it would go to trash?
Let’s assume the name indicated and can only use in a niche area.

Or, another scenario, for example: my entire was asdfBurger.com. Someone came across saw and liked the idea of “asdf”. Instead of buy the domain, he registered asdfsBurger.com/BsdfBurger.com to start a business. Then what would happen to my domain?

 

[anantj]

Nothing would "happen" to your domain. You might, eventually, see an interest from them or you might not. Perhaps someone else will come along and like your domain enough to purchase it

 

[Nikhil Jain]

Nothing would "happen" to your domain. You might, eventually, see an interest from them or you might not. Perhaps someone else will come along and like your domain enough to purchase it

Agreed that the domain itself would be safe.

But isn't it true that no other businesses would actually want to buy a domain that is already a TM ?

 

[tldboss]

"if they decided to use the same name of my domain" to me this is like asdfBurgerx.com, then they go and register asdfBurgerx.ai
then I would wait for the startup to grow & eventually come to purchase the .com or sell it to someone else

"liked the idea of “asdf”"they register asdfsBurger.com/BsdfBurger.com
these are different names (singular, plural) in such a case, I would try to sell the name to them now no waiting or to someone else. Companies change names, but I do not think they change in a way that confuses people e.g. change from Cadabra to Amazon makes sense.

Don't think anything will happen to your domain, as long as everything is above board (like no TM issues etc)

Welcome to namepros! good luck

 

[bluemeteor]

Agreed that the domain itself would be safe.

But isn't it true that no other businesses would actually want to buy a domain that is already a TM ?

That’s the point. I’ll go to read some more first.

 

[namelancer]

What might happen in a hypothetical case is that once they are established they'd lose tons of traffic to your domain, and that's a prospect they are unlikely to take/face..

 

[bluemeteor]

What might happen in a hypothetical case is that once they are established they'd lose tons of traffic to your domain, and that's a prospect they are unlikely to take/face..

What if I had never built a site? Could I still build a site in the same industry? As the name burger could only mean hamburger.

 

[Brandworthy]

What if I had never built a site? Could I still build a site in the same industry? As the name burger could only mean hamburger.

The timing of your build-out might be considered, especially if it came long after the other site had developed its presence and TM. You could certainly be on shaky legal ground, but really the words matter here. Using "asdf" isn't helpful unless that's a close representation of the actual string used here. Your domain would be safer if you did not try to use it in the same industry as the TM is registered in. Simply offering it for sale, without trying to profit in any way from the other party's TM, shouldn't result in legal issues if the domain was registered prior to the establishment of the other party's TM. But as with all things legal, you might want to talk to an IP legal professional for real guidance.

 

[namelancer]

What if I had never built a site? Could I still build a site in the same industry? As the name burger could only mean hamburger.

Not necessarily, it could just as well mean BurgerKing

Things to keep in mind:

1. A domain holder should not approach a TM holder or its competitor offering to sell a name that is identical to the trade-marked name, even if the date of domain registration predates TM's. It's advisable to be also informed on what constitutes a confusingly similar (to an existing trademark) name or one diluting an established brand.

2. Based on the above, the timing of your eventual approach should be during the build-up period and prior to trademark registration by another party. Bear in mind, that effective date of a trademark acquiring a form of legal validity ( as a precursor to legal protection so to speak), differs from country to country: in US, for instance, the moment of using trademark commercially counts as point zero while in Europe, the date of filing an application for trademark protection becomes a trademark's date of birth (provided it's granted in the end).

 

[anantj]

But isn't it true that no other businesses would actually want to buy a domain that is already a TM ?

It depends. If the domain name is brandable, then it can still be used in a different industry/category. If it is a very focused niche specific domain, then probably not. Taking the OP's example, if it is asdfburger.com, highly unlikely to be used in a different industry. But let's take a slightly more generic example - spinner.com - Can be used for fidget spinners, ballet/dance academy/classes etc. A TM by itself does not preclude a domain from a use in another category/industry

 

[anantj]

Don't think anything will happen to your domain, as long as everything is above board (like no TM issues etc)

By extension, do not park the domain without a blacklist of keywords related to the established business. Or better yet, do not park it at all and put it on a simple lander consisting of a contact form

 

[anantj]

What might happen in a hypothetical case is that once they are established they'd lose tons of traffic to your domain, and that's a prospect they are unlikely to take/face..

This is likely if the domain is extremely close to the established org's domain name. I have a similar situation where I registered a domain for my own use last year and a TM has been filed with an exact match to the domain name. They currently use a prefix+name as their domain name

 

[anantj]

Hopefully someone qualified can provide some insight.

That would pretty much be the advice that @Brandworthy gave - Consult a legal professional well versed in IP laws

 

[namelancer]

Hopefully, You'll find this interview, profiled by DomainSherpa on the subject of UDRPs to be information-rich and helpful:

www (dot)domainsherpa(dot)com/john-berryhill-udrp-interview/

 

[Mister Funsky]

Then what would happen to my domain?

In my opinion your domain is safe...in this case the chicken came before the egg.

Cross your fingers that the entity that decided to pass on purchasing your domain is highly successful. Your name will get traffic and the value will increase.

Just had someone pass on the perfect name for them...they wanted to pay 200 for a name that was worth twenty times that. They bought the info and sent me an email saying they would promote it heavily and that the 200 offer was off the table. I told them I appreciate all the new traffic they will be sending to my dot com...and yes, the price has gone up!

 

[Nikhil Jain]

It depends. If the domain name is brandable, then it can still be used in a different industry/category. If it is a very focused niche specific domain, then probably not. Taking the OP's example, if it is asdfburger.com, highly unlikely to be used in a different industry. But let's take a slightly more generic example - spinner.com - Can be used for fidget spinners, ballet/dance academy/classes etc. A TM by itself does not preclude a domain from a use in another category/industry

How do we discuss facebook.com in the above context ? I'd be glad to understand this angle to gain more clarity on this topic.

 

[anantj]

How do we discuss facebook.com in the above context ? I'd be glad to understand this angle to gain more clarity on this topic.

Not sure I fully understand your question. What about Facebook in the context of my earlier post?

 

[Nikhil Jain]

Not sure I fully understand your question. What about Facebook in the context of my earlier post?

Yeah. I meant can Facebook.com be used in a different niche other than social media ? Assuming Facebook used a variant domain instead of Facebook. Com.

 

[anantj]

Yeah. I meant can Facebook.com be used in a different niche other than social media ? Assuming Facebook used a variant domain instead of Facebook. Com.

It is "possible" but I highly doubt it. Given their wide branding and popularity (also I don't know what classes they have TMs in but I'm pretty sure it's in a lot of technology), I don't think it would make sense to use it. Besides, Facebook.com (or a variant) is a very different situation. FB is already an extremely well-established brand and has TMs dating back several years. This is opposite of the situation that the OP describes.

Standard Disclaimer: IANAL so please do your own due diligence. None of this must be construed as legally sound advice or position.

 

[Nikhil Jain]

It is "possible" but I highly doubt it. Given their wide branding and popularity (also I don't know what classes they have TMs in but I'm pretty sure it's in a lot of technology), I don't think it would make sense to use it. Besides, Facebook.com (or a variant) is a very different situation. FB is already an extremely well-established brand and has TMs dating back several years. This is opposite of the situation that the OP describes.

Standard Disclaimer: IANAL so please do your own due diligence. None of this must be construed as legally sound advice or position.

Thanks for your view points.

 

[Brandworthy]

Given their wide branding and popularity (also I don't know what classes they have TMs in but I'm pretty sure it's in a lot of technology), I don't think it would make sense to use it. Besides, Facebook.com (or a variant) is a very different situation. FB is already an extremely well-established brand and has TMs dating back several years.

At one stage they were trying to lay claim to all Face[word] terms as infringing their TM. I'm not sure where their argument went, and obviously there are many services using Face[word], Facetime coming instantly to mind. But I'm pretty sure they did try to argue that their TM strength entitled them to any mark starting with "face".

 

[anantj]

At one stage they were trying to lay claim to all Face[word] terms as infringing their TM. I'm not sure where their argument went, and obviously there are many services using Face[word], Facetime coming instantly to mind. But I'm pretty sure they did try to argue that their TM strength entitled them to any mark starting with "face".

Yes, it does not. I remember that case. They also, iirc, tried to muzzle an adult site (f*ckbook.com) and a few others.

 

[DASHCAMCLIPS]

It is a complex legal matter which will be ruled upon by a Judge who probably does not have a clue what domaining is and thus will favor the owner of the trademark. However: if you own a domain and somebody regs a trademark with the same name you re safe. Until you use it. If someone owns a trademark and you reg a domain that is very or completely similar you are in deep sh*t. The lawyer of the trademark will have you for breakfast. In both cases you loose. You can own a domain, but if you cannot use it it has no value at all.