Who can answer this TM scenario?

[binaryman]

Here's the situation
I,m a domainer who registers domain names with the intent to eventually sell them to an interested party. OK so now I register the domain name AEROTECH.EU (Entirely fictitious and used as an example)
AEROTECH is lets say the TM of a company in the USA manufacturing aircraft engines and their website is AEROTECH.COM
At the same time there is a company in the USA who has the same trademark but they sell software systems for aircraft. Lets say their domain is AEROTECH.NET
Ok and in the UK there is also a TM for AEROTECH and they sell air purifying systems and their domain is AEROTECH.CO.UK
And lets say that most of the European country tld's are also all taken with the name AEROTECH. Lets say that some of them are part of the USA aircraft engine company in those respective countries and therefore have the same TM logo and name. Then there is an AEROTECH.FR which is a flying school with TM and AEROTECH.PL which manufactures aircraft paint and is trademarked. And AEROTECH.HU which is not even trademarked and sells kites and a AEROTECH.ES which also has no trademark and is a hobbyshop that sells model aircraft. And then finally on SEDO someone has AEROTECH.BIZ up for sale with no content and on Afternic someone else has AEROTECH.INFO up for sale with no content. Ok get the picture?
Now here I am with my domain AEROTECH.EU and I have it up for sale to anyone who has an interest in the name.
NOW HERE IS MY QUESTION
Can any of these companies now institute proceedings to force me to hand over my domain to them? Remember my domain has no content and makes no claims to any particular product. Or am I allowed to have this AEROTECH.EU domain and park it with lets say SEDO or AFTERNIC and wait for a buyer?

Please give me some feedback and advice here.

 

[Badger]

in short, no...

 

[binaryman]

No as in I may not sell this name or NO as in they cant do anything to me?

 

[Badger]

No, as in if dont show bad faith i.e. look to benefit from anothers trademark or pretend you are them or have registered as a direct result of their mark, or look to sell it to a mark holder, then you are ok...

Sounds like a generic term you are speaking of and if you dont intend to create a site which does a similar business as a mark holder then fine..

 

[binaryman]

Thanks Badger
I am not sure if it can be considered a generic term though but I guess that is'nt really all that relevant in the scenario I sketched. There are quite a number of situations which are exactly the same as the one above such as WEBTECH, TELTECH, CYBERTECH, AQUATECH, AUTOTECH, SMARTTECH, CLEVERTECH ect.
__________________

 

[binaryman]

I posted exactly the same question as I did here on another TM orientated forum and this is the reply I got from a Mr. Sonneband to my question and my follow up answer/question

"You likely violate the ACPA in the U.S. and are almost certainly subject to UDRP proceedings both here and in the EU. So the short answer is, yes, one or more of these companies will likely be able to take your domain from you without compensating you, based on my understanding of the facts."
SonnabendLaw
Specializing in Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
[email protected]

To which I replied
OK Mr. Sonnaband if that is the case ..then why dont these above mentioned holders of the various tld extensions of AEROTECH take each other to court for various TM infringements? Why would I as a newcomer to the AEROTECH scene be singled out?
Have I any less right then any of the others to stake my claim? Remember.. I am not competing with any of their products.. I am only registering the name AEROTECH just as they have done earlier on and since they allow each other the freedom to use that name since their services or products dont overlap directly, why should I not be able to? I mean.. what, if any, threat could be construed from me owning AEROTECH.EU that is not already present from the various other holders of the name AEROTECH? I might want to start up a business under the name AEROTECH that offers a new style of aerobic exercise that involves a lot of jumping up and down and flapping one's arms.
So I presume that would be OK. But if my intention is only to register domains with the intention of reselling them at some stage then that is illegal. Thus anybody registering a domain or domains with the only purpose being to sell them at a profit later on is immediately doing something illegal regardless off whether a trademark exists on that particular name or not. In other words it is not allowed to trade in domain names.The very act of registering a domain name without a legitimate reason other then for reselling is thus not allowed. And since almost every word in the dictionary today can be trademarked and with the hunting season declared open on "Cybersquatters" it means that all those domains for sale on SEDO and Afternic and other similar companies, are all breaking the Trademark law somehow, somewhere. Well that does not bode much good for the domain industry then does it? It looks like it's turning into a witchhunt on domain name traders.

 

[Broker]

Good anwser, but I'd imagine each of those companys useing that term may be in contact with each other and share profits etc. Politics maybe? I think you have a case personally if came to be. I'd contact the .com and tell em' its up for auction and see what happens. Worse comes worse, then what? Cant get blood out of a stone.

 

[labrocca]

You can lose this domain in a WIPO that's very possible. Also the reason these companies don't sue each other is because each does have a claim for usage of the name. You however do not seem to have a legitimate use. By your first statement it's proven.

I,m a domainer who registers domain names with the intent to eventually sell them to an interested party.

Intent at time of registration is a part of the formula when it comes to deciding a WIPO. Also legitimate use...which you don't seemingly have. You are a squatter plain and simple. You are the type of person they have created the process for.

 

[binaryman]

So in other words every person that registers domains with the view to sell them is guilty. That means all the people on this forum who own all those many domain names which they have parked at Sedo and Afternick and other places waiting for buyers. If I understand you correctly I am a crook and a piece of trash. I am scum of the earth for being a person who regs a few domains and hopes to sell them again with some profit at some stage. I thought that was what domaining and this forum was all about.

 

[Badger]

You are a squatter plain and simple. You are the type of person they have created the process for.

unlike someone who registers [george]foremangrills.com or [xbox] 360forum.com you mean? :lol: way to go Jesse....

 

[labrocca]

I am not judging him. Just stating what can happen. Also I didn't register either of those names. I purchased them. I know some of my names if challenged would be a problem but that's solely my risk and I don't ask others opinons about it. You can speed on the highway too but that doesn't mean I am going to tell you it's legal and you should do it.

It's not because your intent to sell at registration is the problem..it's that on registering a TM name you have intention to profit on the name and have no other legitimate use. That's truely the definition of cybersquatting which carries a fine up to 100k and it has been enforced in court.

On a side note..notice on names I have that I don't hide them nor my identity. All my whois is legit information. I have nothing to hide and I am not ashamed of any domain I own. I have only gotten one C&D and basically I replied to them that I will fight to keep the name and have not heard back from them. Unlike some...just about every name I have I develop into a site.

 

[binaryman]

Labrocca I have been in this game only for 3 months now. I have spend $700 on regginf some secondrate .com names as there is not much available that is really good quality. I now wish to get on the .eu bandwagon. I HAVE NEVER CYBERSQUATTED!!!!! I dont wish to either. THAT is why I posed the question. IT WAS ONLY AN excample. GET IT. AN EXAMPLE! It is because I want to steer clear of trouble. That is why I feel a bit insulted at your admonishing tone and being called a squatter and being told this wipo law was made for me. By the way I still feel it is a borderline case as AEROTECH is a name that covers a wide aeronautical field. It is not like it is a particular product at all. We as domainers should also not let ourselves get duped by TM holders to much as eventually we will suffer. Look at the ELEPHANT.COM case. I do agree that one should not and can not register a name such as CocaCola, Nestle,Microsoft, Chrysler,Yamaha,Sony, ect. AEROTECH is neither a famous brand or a particular product. Yes there are trademarks on it by various people or companies as I sketched in the above scenario. If I really had this name I would want to sell it to someone who wanted to use that name for their business-not necesarily to one of the current TM holders.
So if this name AEROTECH is off-limits then so would WINEWORLD,CARWORLD WINESHOP,CARDEALER,ELEPHANT,ENCRYPT,HOUSESALES,PROPERTYSALES,JEWELRYWORLD ect also be as there are Trademarks on them too by different companies.
You see what I am saying-Since it is possible to basicly TM any word or description in the dictionary it leaves domainers with nothing to register at all really. Every name ever registered is thus in danger of being challenged and taken away from the registrant.

Here is an extract from WIPO
" 274. We consider that the best safeguards against the fears of the opponents of exclusions are twofold. First, discipline and rigor in relation to the criteria for assessment of entitlement to an exclusion, which are discussed below, are required on the part of all and, particularly, the panels which will be responsible for that assessment and the owners of marks. It must be understood that not any mark will qualify. Secondly, in view of the undifferentiated geographical space of the gTLDs, it is considered that, in order to qualify for an exclusion, a mark should be famous or well-known across a widespread geographical area and across different classes of goods and services. The policy that may ultimately be adopted in relation to the structure of any new gTLDs may require a review of the last point. To take one example, if 500 new gTLDs were created (and it is not suggested that this is a possibility), the degree of differentiation and the means, if any, of enforcing compliance with domain descriptions (such as "com" or "net") may warrant that exclusions be granted also to marks that are only well-known for goods or services corresponding to those domain descriptions. This is not the case at the moment, however.

275. It is recommended that a mechanism be established before the introduction of any new open gTLDs whereby exclusions can be obtained and enforced for marks that are famous or well-known across a widespread geographical area and across different classes of goods and services."

 

[binaryman]

It seems not only trademark issues are a problem but KEYWORDS also. Here an extract from WIPO
348. Recent technological developments, however, may impact on the future relevance of domain names. Keyword systems, which have started to make their appearance, offer the potential to substantially reduce user reliance on domain names as Internet signposts. While various systems are available now, each with its own technical characteristics, they have one feature in common: to access a website, a user no longer needs to enter the site’s domain name in the browser location or address field. Instead, a keyword may yield the same navigational result 228.

349. Depending on their market acceptance, degree of use and navigational accuracy, keywords, in addition to domain names, may increasingly be relied upon to perform the function of locating businesses and their brands on the Internet. However, the same landrush mentality that applied to domain names may take hold in this area as well, as commercial and other interests seek to arrogate valuable keywords for themselves. The practices and procedures on the basis of which persons or organizations obtain keywords and the manner in which keyword systems operate may well cause difficulties similar to those now encountered in relation to domain names.

350. While some of the systems allow parties to share the same keyword 229, other systems do not permit this 230. The inability to share a keyword, similar to the DNS uniqueness requirement, may lead to conflicts between persons or enterprises coveting common words that form part of marks as keywords. Furthermore, the fact that certain systems allow generic terms (such as "golf", "car", "book") 231 to be employed as keywords may further complicate matters, as it undercuts the keyword’s core functionality, namely, the identification of a website with a reasonable degree of particularity. The grounds and procedures for the attribution of keywords may, if not properly conceived, lead to problems similar to those that have resulted from less than optimal domain name registration practices. 232

351. Potential concerns are well illustrated by way of the following example. Several businesses, located in various regions of the world, have registered domain names with the common element "telecom" in each. The list includes SymmetriCom, Inc. (www.telecom.com), Telecom UK Ltd. (www.telecom.co.uk), TWX Telecommunications GmbH (www.telecom.de), Telecom s.r.l. (www.telecom.it), Telstra Corporation Ltd. (www.telecom.com.au) and Swisscom (www.telecom.ch). Nonetheless, some of the currently available keyword systems direct a user entering the keyword "telecom" only to the website of SymmetricCom, Inc., without any reference to the other companies. 233 Depending on how widely these particular systems are used, this may impact on the companies’ visibility on the Internet. Potential concerns in this respect are reinforced by the fact that certain keyword systems are incorporated into and interoperate with the most popular Internet browsers, further leveraging the marketing power of the keywords registered therein.

352. Only the future can tell to what extent the debate may shift from domain names to keywords, and market acceptance of keyword navigation systems will play a determining role in this respect. However, many of the same positions and arguments heard in the domain name controversy may resurface. 234

So maybe the best solution would be for .COM to only be available for domains which have a proven commercial interest and to create another tld which is exclusively for non-commercial names.
That would go a long way in weeding out domain name trade and cybersquatting for profit.

No more laws are needed
in the internet that will make small business have a hard time
doing business on the internet. To many companys are going to clam tradename
and Geographical terms or they will invent a reason to clam the name
and the small business will not have the moneys to keep there names.
We can not keep giving BIG BUSINESS GENERIC DOMAIN NAMES JUST
because they have BIG MONEY!!!!! No More Laws on Domain Names PLEASE!!!

Finally: The EU landrush starts on 7 April 2006- Companies and others with claims have up to then to grab their domains. In fact they had since middle of last year already. What is left after that anyone may register. Of course that does not mean that you can register any left-over TM names but those companies should wake up and take their domains now instead of crying later.

 

[labrocca]

You are a squatter but don't want to admit it. Your first sentence said it all.

I,m a domainer who registers domain names with the intent to eventually sell them to an interested party.

And since you have no real interest in the usage of ANY domain you register then YES you do have a possibility of every name you register being taken from you. Is this likely..not at all. Do I care you are a squatter? Nahh..not really. Do I think any less of you because you squat. NOPE. You do you...I do me. That's how I see it. But don't try to and justify your actions and defend your legal position. You are complaining that all names can't be registered which is way over the top. I still hand-reg lots of names every week. You stated you are very new to this (3 months) well let me give you some advice...relax...learn...and don't jump into things.

Most good domains are taken and that's reality. All dictionary words are taken...anything with an OVT score of 10k is taken. Almost all 2 word generics are taken. All 3 character .com's are taken.

The value in domaining imho is NOT registering names. That boat has left. The better value is development. resale, and finding great deals. You can still hand-reg names but it's pure speculation based on new technology or what's happening that's new in the world.

Good luck binaryman and keep your chin up. It's not all bad and most domainers say they are making more and more money.

 

[Badger]

since you have no real interest in the usage of ANY domain you register then YES you do have a possibility of every name you register being taken from you.

Im not sure youre quite getting the point Jesse, hes been talking hypothetically, rather than using an actual example... (at least i think thats what hes doing)... And i say fair play to someone who as a noob in terms of time spent in 'the game' (for want of a better word), I think hes approached it in a very professional manner..

And as far as your quote above and also your comment regarding you not being a squatter because you bought your clear TM names rather than regging them when they were freely available, then I think you need to think again...

And Binaryman, if you need a good read that tackles quite a lot of what you ask, this thread is worth the 5 minutes

http://www.namepros.com/legal-issues-and-disputes/158963-ceo-software-company-makes-me-offer.html

 

[labrocca]

Well then hypothetically he is a squatter. I develop and have intentions to develop every name in my portfolio.

http://www.webopedia.com/TERM/C/cybersquatting.html

I could care less if I was called a squatter..or any name for that matter. I do what I do and labels from other people don't effect that.

 

[jberryhill]

Binaryman, look at it this way. The domain dispute procedures require three things for the complainant to win:

1. The domain is identical or confusingly similar to a trade or service mark of the complainant.

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

3. The name was registered in bad faith - i.e. with an intent to exploit the trademark owner's rights in some manner.

So in the typical purely speculative situation, where the domain name is not being used or connected with keyword-relevant PPC, you lose on 1 and 2, since 2 requires active use or demonstrable preparations to use the domain name prior to notification of a dispute. The proceeding then boils down to point 3, which is an element of intent. Now, it is surely true that nobody can climb inside your head and determine what your intent was with any absolute degree of certainty. So the panel is going to make inferences about your intent based on the circumstances - is the name a dictionary word or a made-up term? is there reason to believe you knew about the mark? what other sorts of domain names have you registered? and so on.

It's just not as cut and dried as you would like it to be. The fact that multiple parties may have trademark rights in the same term for different goods or in different geographic areas is not really relevant to YOU, what YOU are doing with the domain name, and what YOUR intent was upon registering the domain name. It is absolutely true, and perfectly mundane, that multiple parties can develop rights in the same term for different things or in different countries. But if YOU aren't using the domain name for anything, then what difference does it make what some third party not in the dispute is or is not doing? The argument sounds like a bank robber saying, "But I just saw five other people withdraw money from the bank and not get arrested." In a domain dispute, it is up to you to explain your registration and use of the domain name, and not whether there are multiple TM owners or other infringers.

 

[binaryman]

Thanks JBERRYHILL. That was the answer I needed. That explains it perfectly to me. Just one last little thing. Would it make any difference at all if the domain name in question was a 100% generic word?
Regards
Binaryman

 

[edwinfelix]

You gotta realize that they can sue you if they want to. Not that they'll win, but it's not a good thing if you aren't a lawyer.

 

[binaryman]

Sure.. And I guess in the worst scenario I can just give up the domain to them without contesting it and only loose the registration fee. Perhaps they will be nice and pay me back that for my trouble of registering the domain for them. They wont gain much by sueing me as I am jobless and live of the dole. he he