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.

 

[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?

 

[johnn]

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

 

[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]

The domain I was referring to is
PERMALENS.COM

 

[usernamex]

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

 

[doubleU]

In some situations trademarks can be lost due to lack of use, also the mark may not be renewed next time around so it may have a future in someone elses hands.

 

[doubleU]

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.

This does not mean you have rights of ownership of the domain although your right to say that trademark infringement as got to do with it's use.

 

[Domains - Wanted]

@Silentptnr

Too bad you hadn't set up a poll here. Would be interesting to see distribution of NP domainers' yes/no votes on this question

Anyways, my vote is: yes, go for it!

 

[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)

 

[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

 

[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.

 

[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.

 

[Domaniak]

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.

Short version: YES!
Grab it! Assuming you are ready, willing and able to fight for it if and when time comes!

With all due respect to trademarks, they are not God's universal carte blanche to a name. There are many scenarios where you can profit from such a domain name without infringing on the preexisting trademark. You can even trademark the name yourself to match your acquisition

 

[N-A]

No, it's not illegal to sell domain names to the government. However, speaking from experience of working in the government and not from attempting to sell domains to the government, I believe that this would be a rigorous process. There are way too many formal layers, even more so than a corporation has, for spending any appropriated or non-appropriated funds – the latter of which would primarily be the targets of a commercial based/use domain name (example: MCCS, Navy MWR, etc.).

Additionally, NAF "companies" tend to go with the "second best" (.net/.org) if they're available or whatever is in .com as their target demographics are already met: The people in the agencies themselves and typically, not outside consumers; this way, it really doesn't matter what domain they have as they have free advertising already. Your domain would not fall into this group, but, some examples of this would be marineforlife.org (which now redirects to MCCS' homepage, which is a .org, with a hyphen mind you, itself) for their M4L program and the suicide prevention hotline, dstressline.com (two of which that come to mind as I always hear them on the AFN Pacific radio, the radio station over here with Marines/Air Force personnel as DJs... I don't know if they are NAF or not, but, they use afnpacific.net)... Surely, you can see where I'm going with this.

In conclusion, things move very slowly in the government. I suspect that you could sell your name to a private party before the 2nd person, in a chain of like 1000 mind you, would even see your email for approval (but, most likely, denial).

tl;dr: the government is probably not interested in your name and you'll save yourself some time and heartache just trying to sell it to an end user in the tax biz (H&R Block, etc. for example)

 

[Michael Ehrhardt]

I done some research on the @ and found out it is trademarked

what does this mean ?

Since 23 October 2012, the At-sign is registered as a trade mark by the German Patent and Trade Mark Office—DPMA (registration number 302012038338) for @T.E.L.L.

While company promoters have claimed that it may from now on be illegal for other commercial interests to use the At-sign,[citation needed] this only applies to identical or confusingly similar goods and no court, German or otherwise, has yet ruled on this purported illegality.

A cancellation request was filed in 2013


The at sign, @, normally read aloud as "at", also commonly called the at symbol or commercial at, is originally an accounting and commercial invoice abbreviation meaning "at a rate of"
(e.g. 7 widgets @ £2 = £14).
In contemporary use, the at sign is most commonly used in email addresses. It was not included on the keyboard of the earliest commercially successful typewriters, but was on at least one 1889 model and the very successful Underwood models from the "Underwood No. 5" in 1900 onward. It is now universally included on computer keyboards.

go for it

 

[doubleU]

I have another question for @N-A @doubleU @Jasper schilperoord and anyone who can answer it.

Can i sell or is it even legal to try and sell a domain to the government like irs.gov ??

should i even try or avoid headache?

for example i see that irs.gov is the owner of freefilefillableforms.com and im the owner of fileforms.com i was thinking in selling to them but dont even know if its legal to sell domains to the government.

Would love some feedback

Thanks in advance.

There has been trademarks similar to 'FILEFORMS' in the past which now appear to be dead, most notably 'FORMSFILE' and 'FORM FILE'. While it may seem ok to use or sell the domain fileforms.com now, it might be wiser to seek professional legal advice before doing so.

I'm not aware of any illegality with regard selling non-trademark gTLD domains to governments, please bear in mind that laws are different in each country.

If I were to hazard a guess, I should think it is OK to approach your government with an offer for fileforms.com on this occasion but chances of success may not be to your liking as it becomes rather complicated for them to change the naming of official and legal terminology that tend to cascade throughout there systems.

 

[Silentptnr]

@Eric Lyon

Is it possible to add a yes or no poll to this thread?

 

[Eric Lyon]

@Eric Lyon

Is it possible to add a yes or no poll to this thread?

Poll added

 

[Silentptnr]

@Silentptnr

Too bad you hadn't set up a poll here. Would be interesting to see distribution of NP domainers' yes/no votes on this question

Anyways, my vote is: yes, go for it!

Great idea!