Valuate Domain Names
DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars
HomeRegisterMembershipsGetting StartedDomain Tools Domain EbooksSEO Software Domain Resellers Advertise

Go Back   DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars > Domain News, Beginners Guides and Legal Stuff! > Domain Name Legal Issues
Register Search Today's Posts Mark Forums Read

Reply
 
LinkBack Thread Tools Display Modes
Old 05-26-2008, 08:21 PM   #1 (permalink)
Platinum Lifetime Member
No Avatar
 
Last Online: 11-20-2009 05:13 PM
iTrader: (0)
Join Date: May 2008
Posts: 93
DNF$: 105
Location: Canada


Potential legal problem

Hi, I'm a new domainer and I made a mistake.

I registered a one-word generic domain that I honestly didn't think was a trademark. Unfortunately, it turns out that it is one. I didn't check the trademark database before registering (I know, stupid), and I don't want to get into any trouble. I don't think the company has noticed yet. I haven't made any money off of the domain (it's not parked or developed).
What should I do in this situation? Should I contact an attorney? Should I drop the domain? Selling it would make me look bad. If I can't sell it and I can't keep it, how do I get rid of it?

Thanks so much for your help!
burgerman is offline   Reply With Quote
Sponsored Ads
Old 05-26-2008, 08:26 PM   #2 (permalink)
The Evil Mod
 
draggar's Avatar
 
Name: Ed
Last Online: Yesterday 08:38 PM
iTrader: (36)
Join Date: Dec 2007
Posts: 8,341
DNF$: 436
Location: South Florida
Country:

Send a message via ICQ to draggar Send a message via AIM to draggar

(I am not a lawyer, I do not play one on TV nor do I look like one)

Your chances of having any legal action against you right now are minimal. You said it is not parked or developed (make sure it is not parked by your hosting company, if it is, just throw up a page with the domain name or something very basic (even a blank white page).

The ethical thing to do is notify the company that you registered the domain and offer it to them for free (asking any money might start a case against you).

If you don't want to do that, you can just drop the name. Most registrars will allow you to immediately drop a domain.
draggar is offline   Reply With Quote
Old 05-27-2008, 03:59 AM   #3 (permalink)
Platinum Lifetime Member
No Avatar
 
Last Online: 11-20-2009 05:13 PM
iTrader: (0)
Join Date: May 2008
Posts: 93
DNF$: 105
Location: Canada


Thanks for the advice dragger!

Another question: in low-profile trademark infringment cases, what usually happens? Does the cyberersquatter get sued? or is the domain simply handed over to the rightful owner?

Thanks again
burgerman is offline   Reply With Quote
Old 05-27-2008, 07:02 AM   #4 (permalink)
Missing in action
 
sdsinc's Avatar
 
Name: Kate
Last Online: Today 04:05 AM
iTrader: (41)
Join Date: Jul 2005
Posts: 4,669
DNF$: 28,097
Location: .cz
Country:


Quote:
Originally Posted by burgerman View Post
I registered a one-word generic domain that I honestly didn't think was a trademark.
Depends how 'generic' it is. For example apple is a generic keyword. If you sell computers with a name like 'apple' you may have problems down the road. For anything else includig grocery you should be OK.
If the name is truly generic in nature then it would depend on actual use (ie not operate in the same area of practice as the TM holder so there is no likelihood of confusion).
__________________
VeryOldNames.com
sdsinc is online now   Reply With Quote
Old 05-27-2008, 08:46 AM   #5 (permalink)
Account Terminated
 
domain newbie's Avatar
 
Last Online: 06-19-2008 12:08 PM
iTrader: (22)
Join Date: Mar 2005
Posts: 2,891
DNF$: 12,703
Location: my home is where my bank account is
Country:


Quote:
Originally Posted by burgerman View Post
Thanks for the advice dragger!

Another question: in low-profile trademark infringment cases, what usually happens? Does the cyberersquatter get sued? or is the domain simply handed over to the rightful owner?

Thanks again
lol, thats the funniest concern so far, why just don't delete a domain, or change whois info to your haters names for example
domain newbie is offline   Reply With Quote
Old 05-27-2008, 12:45 PM   #6 (permalink)
Platinum Lifetime Member
No Avatar
 
Name: Dave Zan
Last Online: 11-12-2009 09:55 PM
iTrader: (1)
Join Date: Aug 2004
Posts: 1,663
DNF$: 0
Location: Manila


Quote:
Originally Posted by sdsinc View Post
Depends how 'generic' it is.
Or if it's really generic to begin with.
__________________
Vidi, Vici, Veni!
Dave Zan is offline   Reply With Quote
Old 05-27-2008, 02:25 PM   #7 (permalink)
Platinum Lifetime Member
 
domaingenius's Avatar
 
Last Online: 11-07-2009 12:10 PM
iTrader: (5)
Join Date: Mar 2006
Posts: 1,027
DNF$: 148
Location: United Kingdom
Country:


Quote:
Originally Posted by burgerman View Post
Hi, I'm a new domainer and I made a mistake.

I registered a one-word generic domain that I honestly didn't think was a trademark. Unfortunately, it turns out that it is one. I didn't check the trademark database before registering (I know, stupid), and I don't want to get into any trouble. I don't think the company has noticed yet. I haven't made any money off of the domain (it's not parked or developed).
What should I do in this situation? Should I contact an attorney? Should I drop the domain? Selling it would make me look bad. If I can't sell it and I can't keep it, how do I get rid of it?

Thanks so much for your help!
It depends what you use the domain for. It depends also on what Classes/Uses the trademark is granted for. It depends on how well know the trademark is. If its like "Virgin" then you may have a problem but again depends on the afore.

DG
domaingenius is offline   Reply With Quote
Old 05-27-2008, 05:44 PM   #8 (permalink)
Platinum Lifetime Member
No Avatar
 
Name: TonyD
Last Online: 05-29-2008 12:48 PM
iTrader: (0)
Join Date: Feb 2008
Posts: 6
DNF$: 10
Location: Ohio
Country:


Generic Domains are ok, but...........

By "generic" I assume you mean a dictionary word.

Its hard for me to imagine a scenario today, given the current interpretation of the laws, which would allow someone to take a generice domain name away from you just because you owned it. There would have to be extreme bad faith on your part and I would suggest that even that would not be enough. If you are using it to steal their traffic or sell competetive goods then you may have a problem.

With that said, there are plenty of people that do not have the stomach or the pocketbook to protect their rights when threatened by large corporations even when they are innocent. I recall one time receiving a letter from the NFL's attorneys telling everyone who owned the name of a football team (jets.com, dolphins.com, cowboys.com etc.) that they were breaking the law by owning it and they had to turn the names over to the NFL. Of course they were wrong but some people handed them over out of fear or financial challenge.

Most trademark scholars would agree that you can always use a dictionary word for the meaning it has in the dictionary without infringing anyone's trademarks. Its not just the word, but how you use it. Apple is generic for apples but not for computers.

If you're afraid of the name, sell it. I know plenty of people that will buy it.

This is not to be construed as legal advice.
CyberLawyer is offline   Reply With Quote
Old 05-28-2008, 05:43 AM   #9 (permalink)
 
HuntingMoon's Avatar
 
Name: Evan
Last Online: 11-13-2009 09:02 PM
iTrader: (27)
Join Date: Mar 2008
Posts: 1,220
DNF$: 3,286
Location: Bay Area
Country:


selling it will also be bad faith/unjust enrichment if it is infringing.
__________________
HuntingMoon PDDW.COM_Essociate
Join Our Mailer!__ Find Drops
HuntingMoon is offline   Reply With Quote
Old 05-28-2008, 09:47 AM   #10 (permalink)
DNF Addict
 
DNQuest.com's Avatar
 
Last Online: 09-23-2008 04:35 PM
iTrader: (2)
Join Date: Oct 2002
Posts: 1,100
DNF$: 4,835
Location: Columbia, MD

Send a message via Yahoo to DNQuest.com

Cyberlawyer... please refer to the other thread which you posted on.

One thing missed, is the word descriptive in nature? Jets, Dolphins, Cowboys can be descriptive if the content of a site that has Jets, Dolphins or Cowboys on them (not teh NFL kind). Additionally, TMed "generic" words can be used outside the catagories which the TM is used. The usual example is "Apple", selling computers=bad... selling music=bad... open "Apples Garden Supply" or you have apples.com and sell apples=good

You have to move beyond the thinking of a "generic" domain onto the usage and the descriptive nature of the domain. If you have NFL or even sports related materials on Jets, Dolphins or Cowboys, don't expect to keep it for long if challenged.
__________________
Track emails that you send, PM me to find out how....
DNQuest.com is offline   Reply With Quote
Old 05-28-2008, 04:52 PM   #11 (permalink)
Platinum Lifetime Member
No Avatar
 
Name: TonyD
Last Online: 05-29-2008 12:48 PM
iTrader: (0)
Join Date: Feb 2008
Posts: 6
DNF$: 10
Location: Ohio
Country:


Quote:
Originally Posted by DNQuest.com View Post
example is "Apple", selling computers=bad... selling music=bad... open "Apples Garden Supply" or you have apples.com and sell apples=good .
Keep in mind that if you owned apple.com, and you sold apples at that website, the PTO probably wouldn't let you get a trademark for the service of selling apples over the web. So while you are not infringing Apple computer's famous trademark, you don't have protection for your own use and will have a hard time stopping the guy who owns apple.net from selling apples at his site.

-------------------------
This is not legal advice.
CyberLawyer is offline   Reply With Quote
Old 05-30-2008, 02:58 AM   #12 (permalink)
Platinum Lifetime Member
No Avatar
 
Last Online: 11-20-2009 05:13 PM
iTrader: (0)
Join Date: May 2008
Posts: 93
DNF$: 105
Location: Canada


Follow-up

All of this information has been really helpful. Thanks to all who replied.

I have one more question: What if I have dictionary word for a domain, and this word is not trademarked, yet it is part of a 2 or 3 word phrase that is trademarked. Is this trademark infringment?

Eg, a company trademarked it's name "North Sails" and I picked up the domain Sails.com. And the page is either parked or I develop it and sell sails on it.
burgerman is offline   Reply With Quote
Old 05-30-2008, 03:52 AM   #13 (permalink)
Platinum Lifetime Member
 
typist's Avatar
 
Last Online: 03-20-2009 08:02 AM
iTrader: (10)
Join Date: Mar 2006
Posts: 987
DNF$: 2,067
Location: Vienna
Country:


Quote:
Originally Posted by DNQuest.com View Post
...
you can trust DNQuest.com - he knows the subject, he's a convicted cybersquatter
__________________
always buying domains with type-in traffic. all tlds.
typist is offline   Reply With Quote
Old 05-30-2008, 04:02 AM   #14 (permalink)
fab
 
fab's Avatar
 
Last Online: 11-19-2009 07:01 PM
iTrader: (26)
Join Date: Dec 2004
Posts: 4,442
DNF$: 366
Location: Elad
Country:

Send a message via MSN to fab

Quote:
Eg, a company trademarked it's name "North Sails" and I picked up the domain Sails.com. And the page is either parked or I develop it and sell sails on it.
That is ok. You definitely have the right to use a dictionary word for it's own meaning. Evening Coca-Cola was not allowed to TM both words, therefore others can use Cola.
fab is offline   Reply With Quote
Old 05-30-2008, 04:17 AM   #15 (permalink)
Platinum Lifetime Member
No Avatar
 
Last Online: Yesterday 05:00 PM
iTrader: (35)
Join Date: Dec 2005
Posts: 960
DNF$: 4,810


Quote:
Originally Posted by domain newbie View Post
lol, thats the funniest concern so far, why just don't delete a domain, or change whois info to your haters names for example
Best reply so far ...

Quote:
Originally Posted by domain newbie View Post
lol, thats the funniest concern so far, why just don't delete a domain, or change whois info to your haters names for example
Best reply so far ...

Last edited by mulligan; 05-30-2008 at 04:18 AM.. Reason: Automerged Doublepost
mulligan is offline   Reply With Quote
Old 05-30-2008, 05:08 AM   #16 (permalink)
Platinum Lifetime Member
 
domaingenius's Avatar
 
Last Online: 11-07-2009 12:10 PM
iTrader: (5)
Join Date: Mar 2006
Posts: 1,027
DNF$: 148
Location: United Kingdom
Country:


Quote:
Originally Posted by fab View Post
That is ok. You definitely have the right to use a dictionary word for it's own meaning. Evening Coca-Cola was not allowed to TM both words, therefore others can use Cola.
Hmm, respectfully, what about "Virgin" ?. I would bet that if some registered the name Virgin.com then Virgin group would be all over them like a rash. Same as word "Easy" as Mr Smellitakos who thinks he invented the meaning of the word.

DG

Quote:
Originally Posted by fab View Post
That is ok. You definitely have the right to use a dictionary word for it's own meaning. Evening Coca-Cola was not allowed to TM both words, therefore others can use Cola.
Hmm, respectfully, what about "Virgin" ?. I would bet that if some registered the name Virgin.com then Virgin group would be all over them like a rash. Same as word "Easy" as Mr Smellitakos who thinks he invented the meaning of the word.

DG

Last edited by domaingenius; 05-30-2008 at 05:15 AM.. Reason: Automerged Doublepost
domaingenius is offline   Reply With Quote
Old 05-30-2008, 05:25 AM   #17 (permalink)
fab
 
fab's Avatar
 
Last Online: 11-19-2009 07:01 PM
iTrader: (26)
Join Date: Dec 2004
Posts: 4,442
DNF$: 366
Location: Elad
Country:

Send a message via MSN to fab

Why am I seeing double?

Whether or not a company will go after you or not is not relative to their actual legal rights.

Companies may sue even if they know they're wrong. I know a major company who knowingly allows typos of their tm-domains.

On a practical point you're right, some clear TM infringements may suffer no ramifications, while some clearly legal usage may.

In any case, if "Virgin" was used correctly, then Virgin group would have no case.

The best example. is Nissan Car Company vrs. Nissan.COM

When your right, risking dealing with little companies, is a minor concern
fab is offline   Reply With Quote
Old 05-30-2008, 09:52 AM   #18 (permalink)
DNF Addict
 
DNQuest.com's Avatar
 
Last Online: 09-23-2008 04:35 PM
iTrader: (2)
Join Date: Oct 2002
Posts: 1,100
DNF$: 4,835
Location: Columbia, MD

Send a message via Yahoo to DNQuest.com

Quote:
Originally Posted by typist View Post
you can trust DNQuest.com - he knows the subject, he's a convicted cybersquatter
As are many others around here. But those who followed my case knows I got screwed. I still can't believe they went to a website that I had no association with to determine my credibility, and to top it off, there was no linked website to even associate with the fansite with. Then be told, "my bad, to sad for you". [to support my contentions, just use archive.org to find a hint of linking.]

If anything, I know first hand how a person can get screwed even though they don't deserve it.

But there is an update... I was contacted by an interesterd person about possibly exploring my options. [keeps fingers crossed]
__________________
Track emails that you send, PM me to find out how....
DNQuest.com is offline   Reply With Quote
Old 05-30-2008, 01:03 PM   #19 (permalink)
Platinum Lifetime Member
 
domaingenius's Avatar
 
Last Online: 11-07-2009 12:10 PM
iTrader: (5)
Join Date: Mar 2006
Posts: 1,027
DNF$: 148
Location: United Kingdom
Country:


Quote:
Originally Posted by fab View Post
Why am I seeing double?

Whether or not a company will go after you or not is not relative to their actual legal rights.

Companies may sue even if they know they're wrong. I know a major company who knowingly allows typos of their tm-domains.

On a practical point you're right, some clear TM infringements may suffer no ramifications, while some clearly legal usage may.

In any case, if "Virgin" was used correctly, then Virgin group would have no case.

The best example. is Nissan Car Company vrs. Nissan.COM

When your right, risking dealing with little companies, is a minor concern
Double ? Double ?.

The site crasked about time I was posting so must have been cause ?.

DG
domaingenius is offline   Reply With Quote
Reply


Currently Active Users Viewing This Thread: 1 (0 members and 1 guests)
 
Thread Tools
Display Modes

Posting Rules
You may not post new threads
You may not post replies
You may not post attachments
You may not edit your posts

BB code is On
Smilies are On
[IMG] code is Off
HTML code is Off
Trackbacks are On
Pingbacks are On
Refbacks are On



All times are GMT -5. The time now is 04:06 AM.
Copyright @2001-2009 DNForum.com