trademark, trademark and trademark - DNForum - Domain Sales, Domain Forum, Domain Appraisals, Domain Registrars

**.biz** · 06-15-2004, 02:04 PM

Did you guys experience the same thing?

I own thousands of domain names and receive a few email a day regarding these domains. However 50% of them say like "this is our trademark", "we have the right to the domain", "you need to transfer immediately", etc...

What makes them think that they have the right to these domain names? Or who tell them to use those sentences?

100% of these domain names are not trademarked. Some people just use a .biz for a year and claim to have the right for my .com.

I guess they read or get advice from someone/somewhere to do that to frighten domain owners.

Are you experienced the same thing?

**dax** · 06-15-2004, 02:23 PM

If their request is based ONLY on trademark, they dont have the right to the domain name. UDRP says that registration/usage has to be in "bad faith" and that you should not have any legitimate interests in it - then domain must be handed over to the TM owner. For this story, it is important this part - legitimate interests.

For example, if you own apple-dot-com, and you use it for selling apples from your apple farm, then you have same right to use this domain as Apple Computers Inc. has, which owns the TM.

However, you cannot use term "Apple" to sell computers or anything that their registration of TM constitutes (in the country of the TM registration).

PS:
I think that this would be better if it was in "Legal issues" forum :-D

**Nodnarb** · 06-15-2004, 02:43 PM

Quote:

Originally Posted by dax

However, you cannot use term "Apple" to sell computers or anything that their registration of TM constitutes (in the country of the TM registration).

What if you use it in "good faith" to redirect to the Apple corporate and earn commissions from their affiliate program? (Not that one exists, but hypothetically?) You're not acting in bad faith, but you are realizing commercial gain. ??

**nameslave** · 06-15-2004, 02:56 PM

Quote:

Originally Posted by dax

I think that this would be better if it was in "Legal issues" forum :-D

This is what I'm thinking too, except that member ".biz" (the thread starter) *might* want to keep this thread in the Platinum section.

**.biz** · 06-16-2004, 01:30 AM

Well, i don't mind putting this thread in Legal issue. I just thought that I need members' opinions, not legal advice because I would have no problem defending these names. It's just annoying that I receive this kinds of words very often lately.

**.biz** · 06-16-2004, 01:31 AM

More to add...

I use these domains to generate traffic to my PPC site. If the keyword is apple, it will be apple; not "computer". I use domain names as generic PPC keywords.

**clemzonguy** · 06-16-2004, 01:47 AM

There are such things as "common law trademarks" sometimes people use a "service mark" instead of spending the money but anyone who is not serious about officially trademarking something isn't serious about suing you over it.

**.biz** · 06-16-2004, 02:45 AM

yes, after reading legal issue here for a while, I realize about that kinds of trademark. That's probably why these people say they have trademark. However, these names are absolutely generic and is being used for their purpose as generic keyword. Just that when using domains to redirect traffic, people tend to think that it's cyber-squatting.

UltSearch has been successfully defending most of their UDRP cases. So, I believe that earning money from PPC is legitimate.

**dax** · 06-16-2004, 07:25 AM

@ Nameslave - noted. Thanks.

Quote:

Originally Posted by Nodnarb

What if you use it in "good faith" to redirect to the Apple corporate and earn commissions from their affiliate program? (Not that one exists, but hypothetically?) You're not acting in bad faith, but you are realizing commercial gain. ??

Actually, it is bad faith, because you are then showing that you are intending to disrupt their legal right not to be confused with someone else (that is the base on which TM law is built).
So, this is profiting from making customers think you are the computer seller.

**nameslave** · 06-16-2004, 08:18 AM

Thread moved from Platinum Lounge for better exposure and more targeted audience. Thanks.

By the way, you don't need to be a lawyer to post here. Members are most welcome to share their experience and/or ask a question. Just that you know we DO have a few top-notch attorneys hanging around here.

**.biz** · 06-16-2004, 08:20 AM

thank you, nameslave..

**jberryhill** · 06-16-2004, 09:14 AM

"Are you experienced the same thing?"

Given a number of domain names, the volume of this kind of email traffic can almost be predicted with precision. It is a fact of life that if you have a lot of things, then there will be people who covet those things. It doesn't matter what the "things" are.

Dealing with these kinds of communications is also a fact of life. These sorts of claims range from the legitimate to the downright bizarre. It may well happen that you registered a domain name without knowing that it is a distinctive mark for some sort of product or service, and that your PPC engine converges on that type of product or service. In that type of situation, being gracious (even if the claimant may be somewhat rude) is not going to kill you. The challenge is in separating the nutjobs from the people who have legitimate concerns. Sometimes it can be very difficult to make that initial decision.

**changejobs** · 06-16-2004, 09:51 AM

given the above example, if you owned an apple(lets use apple.net as a made up example) and pointed to a ppc where results show apple computers, would that be evidence of bad faith resulting in loss of domain?

Quote:

Originally Posted by jberryhill

"Are you experienced the same thing?"

Given a number of domain names, the volume of this kind of email traffic can almost be predicted with precision. It is a fact of life that if you have a lot of things, then there will be people who covet those things. It doesn't matter what the "things" are.

Dealing with these kinds of communications is also a fact of life. These sorts of claims range from the legitimate to the downright bizarre. It may well happen that you registered a domain name without knowing that it is a distinctive mark for some sort of product or service, and that your PPC engine converges on that type of product or service. In that type of situation, being gracious (even if the claimant may be somewhat rude) is not going to kill you. The challenge is in separating the nutjobs from the people who have legitimate concerns. Sometimes it can be very difficult to make that initial decision.

**jberryhill** · 06-16-2004, 12:12 PM

Where the PPC result shows Apple Computers?

Context is going to mean a lot - as in, whether the links suggest endorsement or authorization.

http://www.ca7.uscourts.gov/op3.fwx?...no=02-1771.PDF (use of "bargainbeanies.com" for third-party sales of trademarked "Beanie Babies" constitutes acceptable referent use)

That said, UDRP panelists can come out all over the map on this particular issue (e.g. look at the facts and results of flamingo.com and eaa.com).