What if I don't park a trademark?

[matt_bodis]

What if I get a clear trademark, for instance - I register a movie title such as "Shrek3.com" and that movie gets trademarked before I acquire the domain.

Now what if I don't park it ever. It doesn't resolve whatsoever. And then on top of that, what if I never post for sale publically, and never contact anybody to sell it.

Would I have a chance at defending myself if somebody were to file a WIPO against me?

 

[SimpleDomaining]

sorry i just could not help myself not to ask ...why would you buy a domain which you will not be able to use to make money?

 

[angisson]

well usally if you register it or buy a domain like "Shrek3.com" you will be registering or buying it in bad faith. if you do know it has a TM you will loose but you can try the standby that you had no clue it was a TM. either way I would see you losing the domain if indeed they went after you.

 

[Erdy]

well usally if you register it or buy a domain like "Shrek3.com" you will be registering or buying it in bad faith.

I disagree. Was BruceSpringsteen.com registered in bad faith? The owner was even using the traffic by redirecting it to to his website. He had also many other artist names and this wasn't seen as bad faith either.

http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1532.html

You might register a name like Shrek3.com just because you are a fan of the movie or you like the movie. Because Shrek3 is a trademark doesn't mean the domain name Shrek3.com automatically belonds to the trademark holder.

As we know there are three requirements for a wipo desicion to result with transfer:
1. the name is confusingly smillar or identical
2. you have no rights
3. you registered and used in bad faith

I think it would be very very difficult to prove bad faith if the domain wasn't parked or wasn't offered for sale.

 

[Dave_Z]

Would I have a chance at defending myself if somebody were to file a WIPO against me?

Of course you have a chance.

This recent decision sounds close enough to what you're asking.

http://domains.adrforum.com/domains/decisions/868828.htm

The trick there is to show you indeed have a legitimate usage for it.

 

[Alan Glennon]

Would I have a chance at defending myself if somebody were to file a WIPO against me?

Unfortunately, WIPO seems to not work based on logic, but rather precedent. CNN reported yesterday: "Since 1999, WIPO has decided in favor of the complainant in 84 percent of all cases." Thus, I think the odds are heavily against you, even when you "actively" work to not dilute the existing mark.

Using your Shrek3 example, it makes me wonder whether it might be better to create a site that obviously has nothing to do with the existing mark. For example, I wonder if creating a site for the "3rd Annual Symposium Honoring Regional Environmental Knowledge (SHREK3)" would be a better strategy?

 

[DNQuest.com]

It is possible to register a TM domain and setup a fansite, fansites have been defended successfully. The reason they were defended is because they were truely done in good faith. Now, if you register a TM domain and you have any impropriety, that is what causes the downfall (Like creating a BS reason for registering a domain like jag wonders, they don't hold too much water and is viewed as a squatter tactic).

But what reason would you register a domain like that? You can't make any money and you never indicated you are fan and would love to setup a fansite for this TM. Also, passivley holding a TMed domain can hurt you too, that means you don't create rights tot he domain, so if challenged, that does not help you.

So let me guess, you have a domain in mind and want to find a way to keep it if challenged, but looking for a payday down the road?

 

[matt_bodis]

So let me guess, you have a domain in mind and want to find a way to keep it if challenged, but looking for a payday down the road?

You. You! You are good. You are very very good, you!

 

[Ronald Regging]

Movie titles can't be copyrighted/TM. The only protection it would have is as the actual work itself, i.e. the movie. So if your site has absolutely nothing to do with that movie, then you should be fine. For instance, you could put up a basic page about say the history of zeppelins, and in theory, you should be fine.

 

[theprivatejetcompany]

I had the same with Vovlo.be

IF you ask me it has NOTHING to do with Volvo accept a typo.

Eventough I only had a public message not to drink and drive on this, Volvo actually send out their man in black 'team' of lawyers out of Brussels, Belgium, to warn me for a serious lawsuit coming from the Swedish direction if I would ont give up the domain immediately.

Only for the fact that I gave them the domain (just in time..), nothing came out of it. They had made out that I had the domain bad faith. Silly people, those Volvo people. They totally made a fool out of themselfs! But that is a different and too long story..

I think it totally depends on who it is you are dealing with in these cases.

And, how for instance, 'commercially' attractive the domain is. Or, how much of an a&&hole the other person is who thinks he or she needs to go and claim against you, the person who is only owning shrek domains purely for self usage, to to look at, never to be shared with anybody ever.

But, in fact, unless you can proof there is no bad faith as to commercially using the name or any other reason that there could be bad faith involved, they, the owners of the trademark, will be the strongest party.

Only if you have enough money, you would want to go and play this game. Most of the times you will need expensive lawyers.. Let alone loosing a case you will be paying all legal costs as well..

Also, a fansite can be legally taken from the owner. It all depends on who the person is.

We had a case in Holland, Andrehazesfansite.nl or something like that. This site is about a folksinger, this guy used to be a huuge singer in Holland.

A 'Truly everybodies best buddy' kind of person. Millions of people loved him. Then he died and the Andre Hazes fan website became a huge success.

All fans went there to pay homage and the site became huge. Now, the widow found out about this success and also that she was not making money out of this. She made out to be that the best thing to do is to sue the owners of the site.

Her lawyers made it clear that If the site is not closed down asap, they will claim. The owners of the site wanted (and still will) organize a rememberance day and concert for these millions of people out of advertising moneys received.

So, it depends who or what you are dealing with. Some people only think of cash.

Check before you buy would be the best cure. Or be prepared to immediately give the domain name before they start to sue. So do not invest big I would say.

Vovlo.be was free. and a lot of fun.
(It might be nice to know that as soon as I got news of them wanting to sue me, I changed the site from being really friendly into a compilage of all sorts of bad Volvo crashed vehicles. Still not showing any commercial activity on the domain, no bad faith. Just public important information, warning the public that driving should occur save at all times..

Just minutes before their deadline I took it down...lol)

 

[DNQuest.com]

Movie titles can't be copyrighted/TM. The only protection it would have is as the actual work itself, i.e. the movie. So if your site has absolutely nothing to do with that movie, then you should be fine. For instance, you could put up a basic page about say the history of zeppelins, and in theory, you should be fine.

Really now??? Maybe you want to rethink your first sentence? And to top it off, you state as long as they use it for something not related to the movie, he should be fine. So if he used used in the same lines as the movie, would he get in trouble then? If so, then I guess your first statement is indeed inaccurate.

Privatejet, it seems you have some pent up frustration. And judging by the tone of your post, there is more to the story. But TM holders do have a right to protect themselves. As far as the singer, if there were any links or adsense or anything that involves bring in money, that is bad faith, like it or not. Fansites have been successfully defended agaisnt bigger names than your example (brucespringsteen.com). It is all about usage.