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Would registering common surnames be considered as cyber squatting?

Located in Legal Discussion started by kamcreation, Jul 28, 2019.

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  1. kamcreation

    kamcreation Upgraded Member Blue Account

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    I registered some common surnames in couple extensions, having low x,xxx to xx,xxx high number of people with that surname according to Linkedin.

    I was having the itch to contact a few people, but not sure if it is legally okay?

    Would it be a violation of ACPA law (covering personal names)?


    I have a few queries
    1. What actually is meant by personal name in ACPA?
    2. Are common surnames(like 5k to 100k people) also covered by it?
    3. Would there be any issue if I list them for sale?
    4. Can there be any legal consequences if I contact or offer for sale these domains to any person with the given surname?
    Would love input from the legal/domains experts.

    Can you guys please share your opinions/suggestions @jberryhill @equity78 @Ategy.com
     
    Last edited: Jul 28, 2019
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  2. Super-Annuation

    Super-Annuation Restricted Blue Account

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    To be clear, and to my knowledge, Cybersquatting happens when a person registers a domain name after a trademark has been processed.

    So unless you purchase after a trademark, you're in the clear mate.

    But double check that.
     
  3. Ategy.com

    Ategy.com NameCult.com Gold Account VIP

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    Wow .. your first mistake was putting me on the same line as @jberryhill .. lol .. he's the expert and lawyer specialising on the subject .. I've just read and listened and learned a lot over the last couple of years (and seem to be one of the few domainers who actually paid attention to the VERY generous contributions by @jberryhill and some of the other real experts on the subject .. lol).

    That being said .. it's not entirely black or white. In theory if you register the name of someone using their name in business as a trademark (doesn't have to be as big as Beyonce or Madonna or Richard Branson), then you ARE stepping on their trademark.

    HOWEVER .. at a certain point, some marks are less known than others. so you might be forgiven for not knowing about less popular people.

    Also .. even if they do have a trademark .. depending on how strong the good will associated with their brand, if it's just a first or last name alone, then there are plenty of legitimate alternate uses, and as long as you aren't selling/advertising music at Madonna.com, then it'll be very hard to prove bad faith ... but it could be seen as bad faith if you pro-actively try to sell Madonna the domain (the strength of her brand outside just entertainment is too much of a grey zone for me to say either way .. I'd wait to see what @jberryhill says).

    I forget what happened in the end with Prince.com .. last time I remember hearing about it was when I had significantly less knowledge on the subject.


    That being said .. should a person be allowed to trademark just a first or last name? In theory a business can do it .. so yes .. an individual CAN in theory as well. But their problem really becomes establishing their rights to the single name as a trademark. If you have a common name like Michael, then you need to be able to prove and establish that you are the only entity (person or company) doing business in a certain category as "Michael" ... not impossible .. but extremely unlikely ... which is where the first+last name combination makes much more sense for the countless millions of people who use their names in business.

    Even if somebody did establish just their first or last name as their business mark, it would only be for one or few trademark categories. So in some cases it might be technically possible .. but most of the time not.


    My general way of thinking of names is more just ethically than legally (I'll leave the actual legal specifics to @jberryhill .. lol). For me somebody who targets another person's First+Last name is yes indeed (morally) cyber-squatting. With the exception of dead/historical people and politicians (again, that's my moral perspective .. and it's more for "review/critique" type usage as opposed to actually making money pretending to be that politician which most certainly would be wrong)

    However .. when it comes to just a first name alone, or just a last name alone .. I personally don't have any problems with that at all. For the most part they are far too generic to ever be considered proprietary. (I personally think they are good investments *IF* you can get them at the right price)

    All that said .. it's important to note that there are always exceptions. So just step back and ask yourself .. when you think of this name, is there a specific person or company that comes to mind? If the answer is yes .. then be careful. If you are buying any trademark domain (registered or NOT registered like a full name) with the specific intention of selling it to a specific company or person already using that name/brand, then you are effectively cyber-squatting. Obviously there are plenty of alternate legitimate uses in other trademark categories .. but if only one entity comes to mind, it could be an issue depending on some of the various variables.


    That's definitely not correct. There are many subtleties and exceptions when it comes to trademarks ... but the most important thing to note is that a person or company does NOT need to register a trademark to be protected (or to be infringing on an existing trademark whether that other one is registered or not). Individuals and entities are protected from the moment they start using their mark in commerce. Even if they never register it, they still enjoy the same legal protections are a person or company who registered it. The main difference is simply that when you don't register a trademark, it's harder for you to prove ownership of it. But as long as you can prove you've been using it in commerce (relatively easy to prove), then you have the same legal protections.


    @kamcreation .. I realise that doesn't completely answer your question 100% .. hopefully @jberryhill will add his 2 cents and refine/correct my thoughts! ;)
     
  4. Super-Annuation

    Super-Annuation Restricted Blue Account

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    What I meant was, you could use Oracle as a laundry detergent brand, more easily if Oracle didn't have a trademark, so the .com would be fine for oracle.com laundry detergent even if Oracle existed as an untrademarked business name

    ItsI not cybersquatting if you buy the name and therest no trademark generally speaking because domain resellers are allowed to purchase property , aka domain license, for a living.

    You don't have to Google every domain and ask ," do they have enoien goodwill"
    That's ridiculous
     
  5. Ategy.com

    Ategy.com NameCult.com Gold Account VIP

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    Yes .. that's certainly true .. but that wasn't what I was getting at ... my point is that nothing about what you said changes if Oracle registered their tech related trademark or if they did not register it ... just as nothing changes if you registered your laundry trademark or did not register it.

    In the case you use it for detergent you are fine .. in the case where you use it in tech you are not fine. Registration changes nothing.

    Oracle is a generic word .. so you'd have a valid argument for holding it as an investor (and I'm guessing would win your case as long as you weren't advertising tech on it). But say you have something more particular like Microsoft .. as much as it you might not think it makes sense, you could still get in trouble for holding Microsoft.com even if your intention was to sell soap. Again .. trademarks are not as black and white as people think .. strong brand equity/goodwill can spill over into other categories if the trademark is unique enough.


    Depending on the popularity of the company and strength of the brand, you may very well have been expected to know about their (registered OR unregistered) trademark.

    That being said .. I will concede that it's probably very rare where an unregistered trademark is strong enough that you were "expected" to have been aware of it by the courts (or UDRP panel) ... but just understand that it doesn't have to be registered in order to be legally protected as a valid trademark.
     
  6. Ategy.com

    Ategy.com NameCult.com Gold Account VIP

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    Sigh .. my bad on my first response .. my eyes are tired from a long few days .. I misread it as .. to be honest .. I have no clue .. lol .. I think my brain omitted what I put in red. Sorry about that ... :(

    Anyhow .. yes .. in general you're usually safe if you had the domain before the person FIRST USED the mark (not registered or processed). But the problem here is that we're talking about names ... and in theory most people never register their names .. but I'm pretty their name does automatically become protected as a trademark when they start using it in business (essentially any business owner). And again .. depending on the person, you may or may not be expected to know about them (a lot of factors/variables)

    That said .. I'd prefer to hear from one of the experts to confirm that.

    ADDED: Or maybe I did mean you weren't correct .. but just about the "has been processed" part being relevant (because as I pointed out .. trademarks are virtually equally protected whether unregistered, registered or un/processed). (I think I need sleep .. lol)
     
    Last edited: Jul 29, 2019
  7. kamcreation

    kamcreation Upgraded Member Blue Account

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    Yes I know that Mr Berry Hill is the expert(and really generous about sharing his knowledge) but since you are active on the legal forum was hoping to get some quick thoughts :)



    Yes indeed Firstname+LastName seems a darker shade of grey (I acquired a few last year and immediately canceled one that seemed like popular name and let the rest expire without touching them.


    What I am saying is common last names like Baldwin (97k+), Bowman(125k),Chandler (93k+) or others which have like 50k+ population in US alone (and excluding any celebrity names).

    Since I am using popular CCTLD's (.me, .co's, .us .co.uk etc) not .COM's so does that increases or decreases the probability of getting an ACPA notice?

    Just want to be clear before I contact any potential buyers.
     
  8. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    These are all surnames:

    Smith
    Siemens
    Jones
    Porsche
    Brown
    Armani

    1. Are there perhaps two different categories which jump out at you in that list? Again, this is the common domainer trap of "is it a trademark or not?" as a binary condition instead of "what sort of a trademark is it?" as a measure of fame, strength or scope.

    2. What are the domain names doing in the meantime? For example, what do you think of a name like "Bosch":

    https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-2549

    How about a name like Bernette:

    https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1811

    For example, "Ford" is a relatively common surname. It is also a world-famous mark for automobiles. If you, or your registrar, has the name parked and advertising automobiles, then nobody is going to give a sh*t about why you registered the name or whether you are trying to sell the name to people with that surname.

    "Registering a domain name" is not, by itself, cybersquatting. "Registering a domain name with a bad faith intent to profit from a trademark" is cybersquatting. And since no one is psychic, the way that "bad faith intent to profit" is determined by looking at all the facts - usually a wider range of facts than people include in questions - from which one could draw inferences about intent one way or the other. If your list of surnames looks more like Smith, Jones and Brown and less like Siemens, Porsche and Armani, then that would be a useful data point along with "how are you finding people with that surname, and what exactly are you saying to them?", "how are the domain names being used?", "what other sorts of domain names do you have?" and so on.

    How about a name like "Tesla"?

    https://www.adrforum.com/DomainDecisions/547889.htm

    or "Hennessey"?

    https://www.adrforum.com/DomainDecisions/1461370.htm

    The totality of facts matters, including who is doing the asking, since neither the Tesla nor Hennessey cases were brought by the parties you might have guessed.
     
  9. cipcip

    cipcip Owner of TutorialIndex.com VIP ★★★★★★★★★★

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    I don't think so. I took for example kath.xyz -> i even offered to let someone use it for free and then push it to them, again for free., but no interest, apparently there is no Kath or Katherine here on the forums.

    It depends on the name I guess and if it is .com :)
     
  10. kamcreation

    kamcreation Upgraded Member Blue Account

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    1) Majority of the names in the list are like Smith, Brown and Jones etc just less popular (I have made sure to avoid surnames that are registered trademarks) Wana stay in the white zone or just stretch into light shades of grey:xf.wink:

    2) Currently, they are showing coming soon or blank pages was hoping to put a lander on undeveloped/DAN or can even use Efty UDRP compliant lander page.

    3)Was thinking of creating lists of potential candidates via Linkedin,Zoominfo and likes
    (would surely filter out people who have companies with Family name in it)

    4) Can be used as a family domain, a branded email that can be used for generations or even a nice gift for the spouse if can get that info (people share so much stuff on socialmedia these days )

    5)I am using a new email and different address for the surname/given name domains

    Sure each domain case is different, and you cant always predict the exact events, @jberryhill do you think its reasonable precautions taken to do some outreach/outbound campaigns for a few domains to see how thing unfold?

    Was even thinking of registering a company especially for domaining purposes so that there can a veil of incorporation between my a** and a potential litigation
     

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