Would you register a valuable yet clearly trademarked name?

[Silentptnr]

Just wanted to get some opinions. I came across a very attractive .com domain name that is available to hand register. The problem is that I checked to see if it is trademarked....and it is. Been trademarked for many years.

What would you do? Register it and take a chance? Leave it untouched? Give me some feedback please.

 

[Jasper schilperoord]

Well, depends on what you plan to do with it.
If you were to develop it into a website / service offering other goods or services than the goods or services the trademark holder trademarked his mark for, I'd say go ahead. That would in my opinion be just about the only viable way to monetize you domainname.

Not sure how familiar you are with UDRP, but I thought it would be OK here to shed some light on the subject for others not so familiar with it.

Under paragraph 4(a) of the UDRP Policy, the registration of a domain name is considered abusive if meets all the following criteria:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith

Boxes (i) and (iii) are quite easily ticked when you register a domainname of a standing trademark (the better known the mark, the higher the level of protection attributed).

Leaves you with box (ii). In my opinion only the option from my first paragraph fits the bill here. Some might contend parking a page with links to monetize your name would also grant you rights or a legitimate interest here. But that is defenitely not clear cut.
Moreover from a trademark law perspective ( so not UDRP, but TM litigation) this would defenitely not be considered legitimate.

 

[namezest]

Where is it trademarked? What country?... Also if it's a generic name I wouldn't worry there are multiple businesses with the same names all over the place.

 

[Kate]

Trademarked but within a specific industry ? Well-known ? It depends. Could you use it ? I mean, if you plan is to sell it to the TM holder and there are no other possible end users, it's not good.

 

[Silentptnr]

It is a specific industry. It is like a brandable...not generic. It is a well known name.

Probably not regged for a reason. Or maybe it's a trap!

 

[TDM]

like e.g. coca cola?

Worldwide brand awareness
Only 1 customer

That would call for trouble, I'd think.
Oh and to answer your question: I don't like troubles


Maybe you could find out the history of that domain (was registered, forced delete.. etc)

 

[Silentptnr]

Thanks for the advice!

 

[Silentptnr]

I checked and it has been deleted a few times. I'm not going to register it so I can tell you what it is.

Anyone care to guess?

 

[DomainVP]

Never. You are playing with fire.

Don't do it.

 

[TDM]

I checked and it has been deleted a few times. I'm not going to register it so I can tell you what it is.

Anyone care to guess?

Sure, let me know!

 

[usernamex]

You shouldn't be worried - you have a team of NameAttorneys/com after all! : wink :

And yes might as well tell, although you might enable some newb lurker who ends up regging it then! Maybe PM me and @TDM and other requesters

 

[urlurl]

PM me im curious

 

[Silentptnr]

The domain I was referring to is
PERMALENS.COM

 

[johnn]

Keep licking your ice cream and move on or you will not have ice cream to lick.

 

[Silentptnr]

It's amazing how we find these domains!

 

[TDM]

Oh ok i see! (had to google that term as i did not heard about)

 

[deez007]

The domain I was referring to is
PERMALENS.COM

I would never have guessed that one...lol

Kinda weird that they don't own the domain already....

 

[urlurl]

its a product name for a company, not all product lines need their own web site. Anyways, i looks like the product was discontinued anyways.

Permalens - DISCONTINUED Contact Lenses

Therefore;

The old company doesn't need the name anymore
No other lens company would want an old trademark name
Name is tied to a specific niche
Still has a trade mark

I would pass

 

[usernamex]

Now let's see how long it takes for some newb to grab it and post it in appraisals : grin :

 

[Silentptnr]

Now let's see how long it takes for some newb to grab it and post it in appraisals : grin :

I know.

 

[rafaelo0]

Hello @Silentptnr you seem to be educated in the trademark area.

I have a question.

Can a 3 letter domain that is trademarked be sold without infringing the trademark?

For example im the owner of cim.io and there are lots of different trademarks on the word cim, say i put the domain cim.io in auction at some marketplace like sedo will i be infringing in any of the trademarks of the word cim?

No right?

because cim can be a abbreviation for lots of meanings that aren't relevant to the area of the registered trademarks, what the buyer decides to do with the domain is not my concern, is up to him to not infringe in any trademark of the word cim if he uses it for something that is not in the registered trademarks area (industries) he should be safe right?

I would be really grateful if you or some one could answer my question.

Thanks in advance

 

[Silentptnr]

Hello @Silentptnr you seem to be educated in the trademark area.

I have a question.

Can a 3 letter domain that is trademarked be sold without infringing the trademark?

For example im the owner of cim.io and there are lots of different trademarks on the word cim, say i put the domain cim.io in auction at some marketplace like sedo will i be infringing in any of the trademarks of the word cim?

No right?

because cim can be a abbreviation for lots of meanings that aren't relevant to the area of the registered trademarks, what the buyer decides to do with the domain is not my concern, is up to him to not infringe in any trademark of the word cim if he uses it for something that is not in the registered trademarks area (industries) he should be safe right?

I would be really grateful if you or some one could answer my question.

Thanks in advance

It is my understanding that as long as your use of the domain does not infringe on the trademark holder's rights, you should be okay.

 

[rafaelo0]

Thanks for the answer.

But imagine if the buyer for my domain cim.io maybe now or in the future decides to make a website and monetize it in the same industrie has a trademark by doing this he could be infringing in a trademark and the trademark owner decides to sue him could they also sue me for selling him the domain even if didn't had any knowledge of the buyers bad faith intentions?

Maybe you could shine some light on the subject to @Jasper schilperoord

Thanks in advance

 

[N-A]

Valuable and trademark are not synonymous.

With that being said, if Apple Computers didn't own Apple.com, it'd still be valuable to an apple farmer. It all comes down to usage.

 

[rafaelo0]

@N-A thank you for answering.

I agree with you "it all comes down to the usage" but from what your saying then if i register apple.io and build a website that sells apples it wouldn't be infringing in Apple Computers trademark and Apple couldn't sue me?

I think its more complex then that. I know that if i or any one decided to do that, Apple probably would sue and win the case, because Apple is a powerful enterprise that investes a lot in protecting there brand and even if you would only sell apples they would probably find a way to win the case .

example i remember reading a couple of years ago that Microsoft (i think it was Microsoft) and other companies went to court against Apple because i think Apple add a trademark on the word app and other companies where against this because the app market was beginning to appear and expanding, other companies thought that the word app shouldn't have a trademark because it was becoming a large Market/Category/Product but Apple won the case because they defended that App was abbreviation for Apple and i think they already had the trademark before the App business started to really appear and envolve.

Note: read this story way back in the past and my memorie is a bit fuzzy so i dont remember the complete story.

But got to say Steve Jobs was really a genius in everything specially in marketing.