selling domains with trademark

[interactx]

Here is just a suggestion if you are trying to sell a domain with a trademark. If you can post a description with your listing, say this:

Trademark domains must be used to promote the company with their permission. No exceptions.

What do you think?

Just having the registration isn't an infringement. Putting it up for sale isn't an infringement, judging from all the ones for sale on sedo and Afternic and others. It is the USE of it in a way that dilutes the quality of the Mark that is the problem. Like putting up a website and trying to draw traffic. I'm not a lawyer, but this is my understanding from all the cases I've read.

[Ian]

UDRP cases do prevail and especially when common land law is applied might see one loose their name. I think TMs need to be avoided at all costs.

[DNQuest.com]

actually, registering a TMed name is infringement in itself (IE- similar or confusingly similar). Intent at time of registration are concidered in determining bad faith registration. Also, tht TOS of all registrars says you cannot register TMed names if you do not own the TM.

Yes, TM registration and bad faith registration and domain sales of TMs occur all the time, but it is up to the TM holder to enforce these policies.

[EJS]

Also, it is illegal for someone to profit from someone else's trademark - ie selling a name with a TM in it. Many people still roll the dice and take a chance, but if you get caught, it could be painful.

Search around through this section of DNF - there are some posts where people mention companies coming after them financially instead of through the UDRP/WIPO process. Think about this when contemplating a TM name.

[Brett Lewis]

There are two different issues: (1) trademark infringement, and (2) the federal anticybersquatting laws and the UDRP. Trademark infringement exists when someone uses a trademarked term in a manner that is confusingly similar to an existing trademark. The courts apply a 9 or 10 or 13 factor test, depending on the jurisdiction where the court is located, to determine whether a junior use is infringing.

With fanciful (i.e., made-up) words like Yahoo or Google, the scope of protection granted to these marks is extremely strong, and registration of domain names containing such terms, as a general rule, runs a high risk of constituting trademark infringement or cybersquatting -- although sometimes one and not the other. With dictionary words that are also trademarks, the key to whether infringement or bad faith registration and use exist is the use to which these marks are put and the facts surrounding their registration and use.

[jberryhill]

Incidentally, please do not take Brett Lewis as a "newbie".

The value of DNForum membership has just increased astronomically, as Brett Lewis is one of the leading attorneys in this area.

Brett it is great to have you here and welcome to DNForum!

(and I just sent you something I owe you by PM)

[Brett Lewis]

John, I am not sure about the value of memberships increasing astronomically, but I appreciate the kind words! I am glad to be a part of the Forum!! Brett

[fatter]

I wondered about this myself, if it is legal to sell such a domain to a franchise member who has all rights to the trademark/domain, ie: i typed in holidayinn.com a few months back and the holiday inn at niagra falls came up, i dont no if they are independently owned but it was clear one individual holidayinn was using the dotcom. Can a gm dealership buy camaro.com

[skurtz]

I agree with your comments. The interesting thing for a good domain speculator may be a name that SEEMS to be TMed but in fact becomes too vague and loses its undisputable TM appeal. TMs are often much less applicable than people think. Since it often becomes a question of "deep pockets" and litigation, a person could just as equally make a claim that a non TM name is a TMed name, and because they have the money to pursue litigation, you forfeit the name. Since, therefore, it really is a question of how clearly the IP is off-side, if you feel you have a decent argument, and if you are private at the registrar, it would more likely than not be left alone, or at best, you would gain the opportunity to enter into some kind of negotiation.

[DNQuest.com]

Welcome Brett, I hope you enjoy us here at the forum....