Trademark Question

**Duke** · 07-15-2002, 11:36 AM

I'm a new user and I think I posted this question in the wrong forum today - as it involved registration of a name - not an appraisal:

Within the past 2 months I have registered several domain names, mostly for use with my own projects, with a small number for possible re-sale.

This morning I registered a .net name that was a made-up word (combining two common words). I noticed that all other TLD's were registered for this word, but was not bright enough to consider the possibility it was a trademark. I have never heard this name before and just thought it was a clever combination of two words.

I have since learned that all of those TLDs are registered by the same company and there is a registered trademark on the name (actually two registered trademarks from different companies who operate in different areas of business - didn't know you could do that).

What would those of you who have experience in this field do with the name now that I have it? If contacted by the trademark holder how should I respond?

Thanks for any input.

**mole** · 07-15-2002, 11:43 AM

Depends on the specific trademark, Earl. If it is IBM or Sony, you could easily be spotted as an opportunist.

TM for generics don't mean shit in my books. Apple.com ??? whhhhahhahahhahahaa

The best thing is to prove good faith for the name if it is not an obvious tm. Forget USPTO, they have a zillion trademarks, 99% are hopeless aimless.

If you are a squatter, background checks will soon reveal who your are despite your attempts to reason. Good faith - that's the name of the game.

**Duke** · 07-15-2002, 12:18 PM

Thanks for your comments Mole. I am definitely not a squatter and any check would show this. It is not even close to being a brand name like IBM or Sony.

I don't want to give the exact name before I find out what I should do - but to give you the basic idea, it combines a geographic word like America with a common word, for example AmeriBuy would be the same kind of name. I never heard of these folks before looking up the other TLDs in WhoIs (after I had already registered the .net).

If they would have a legitimate claim against me, I need to know how to react. Would you just give the name to them and ask for a small fee to cover your registration and time? The name isn't good enough to get into a big fight over (which is one reason I was surprised anyone bothered to trademark it to begin with).

I am a small-scale web developer and thought it would be a good name for one of several upcoming projects. I have no intention of trying to get any money out of the holder of the other TLD's for this name.

I could just try to dump the name to get it out of my hair or just wait and see if I hear from them. Taking the time to develop a site with that name now seems like a bad idea since there would be the possibility of them coming along and cancelling out the effort.

Has anybody been through this before and if so, how did you choose to handle the situation?

**domainduck** · 07-15-2002, 12:20 PM

Although there are zillions of TMs at the USPTO and registering a domain name that uses the same words is not necessarily a death sentence, it's prolly 'not' a good idea to 'forget' about them. Mole is right though - If you forget about the USPTO, how can there be bad faith if you didn't know there was a trademark in the first place. An enigma?

quack

**Duke** · 07-15-2002, 12:24 PM

Hey Duck - thanks for the comment (good to hear from a fellow Floridian!). See my last post just above yours as I was writing it while you were posting!

I guess this would explain why two different companies have registered trademarks on this name (they are in two different fields of business). You can use the same name in another field apparently....and I assume if there was no bad faith (which there was not), you could then use it any case.

**mole** · 07-15-2002, 12:29 PM

It is always good to claim that "I checked the USPTO and didn't find it trademarked at the point of registration"

But heck, tms are bully tactics pure and simple, intimidating C&D tools to steal names from you because you are scared of threats or lawyers.

Domain game or Kindergarten school yard, the principles are the same.

Always show good faith

1. Have an active web site appropriate to the name
2. Have an active web site appropriate to the name
3. Have an active web site appropriate to the name

Check out http://www.domainbattles.com , worth a laugh.

**Duke** · 07-15-2002, 12:38 PM

Thanks for the tip Mole! I am not afraid of lawyers and threats. I am also involved in the music business and have had an active sales web site in that field since 1997. I have occasionally received notes claiming copyright infringement over items I have had for sale.

I made it a point to learn the copyright laws specific to music and found that the claims they were making were completely baseless. I told them so and they have always dropped the matter. It still happens to this day, but when they find out I am wise to the law on this particular issue, they always go away. They hope to bully uninformed sellers and usually get away with it (this involves selling promotional items produced by the companies - not bootlegs which are a real copyright infringement).

I am much less experienced in trademark law in the domain name field. I don't want to be a pushover for anyone, but I also do not want to take on a bunch of needless headaches if the outcome is pre-determined.

Input from the old hands here is more appreciated that you can imagine!

**mole** · 07-15-2002, 12:43 PM

Hey Earl, old hands I ain't. But bullies I know

Best wishes, you no-pushover-you

**Duke** · 07-15-2002, 12:47 PM

<<Best wishes, you no-pushover-you >>

Thanks Mole - but even if you are not an old hand, you should know better than to put those hyphens in there!

By the way, thanks for the link on the domain battles site. I have bookmarked it and will definitely check it out.

**mole** · 07-15-2002, 12:55 PM

Hey Earl, I saw VirtualReality.biz transfered on domainbattles. That will always stick on my mind for some strange reason.

If you need any advise on the scam of tm, go to http://www.wipo.org.uk . Garry is one of the best proponents on this subject.

Now, that's an old hand

Best wishes on your tm issues.

**Duke** · 07-15-2002, 01:01 PM

Thanks Mole - bookmarked that one too! If the holder of the other TLD's goes to my registrar, how easy is it for them to get the registrar to suspend or cancel a name? Is the simple fact that they filed a trademark and have other TLD's with that name enough to allow them to cause problems at the registrar level?

**mole** · 07-15-2002, 01:04 PM

Never seen a tm bully go for a registrar. They will go for you first.

**Duke** · 07-15-2002, 01:14 PM

Here is another point that I didn't raise. I picked up this name after it expired. So someone until recently held it for at least a year before me. Apparently they were never hassled by the owner of the other TLD's. Is there some way to check on who the previous owners of expired domains were? I am familiar with archive.org but it doesn't show me who the previous owner was (there hasn't been a site up with this name for 2 years).

**mole** · 07-15-2002, 01:18 PM

Not possible

Everyone who has, for example, an eNOM account can change owner details in a flash by pushing into another account. You can do this a million times, with a million different owners, in as much time as you can do the changes.

This facilitates domain sales.

Gone are the days of Netsol impossible to change registrant details.

**Duke** · 07-15-2002, 01:23 PM

Not even possible to see who the LAST registered owner was prior to deletion? I guess since this last holder carried the name for at least a year, the odds of the trademark name holder coming after the .net name are not that great. I guess it is even possible the trademark holder could have been the one who had the .net and accidentally let it expire - though it seems unlikely since they registered everything else, including .us.

**mole** · 07-15-2002, 01:28 PM

Not on public whois records, to my clueless knowledge.

Maybe someone else here is archiving whois recs.

**Duke** · 07-15-2002, 01:43 PM

Here is a whole new twist Mole...and I apologize for not picking this up sooner (as I said I am new at this). I assumed the trademark holder for this name is the same entity that holds all of those web domains with the name. However after looking through the trademark office filing, I have found that the people holding all of the other TLD"s are not even the holder of the trademark name! So I guess I don't have to worry about them complaining I am violating their trademark!

Now what would you do? Would it make any sense to offer them this .net name since they hold every other TLD?

**Nic** · 07-15-2002, 04:14 PM

Get a room you guys

**skylark** · 07-15-2002, 08:31 PM

What would those of you who have experience in this field do with the name now that I have it? If contacted by the trademark holder how should I respond?

Earl, regarding your trademark "discovery":
Check the name in the USPTO carefully . See if the registration indication on the face page of the trademark description is indicated as "principal" or "supplemental". There is a big difference. If it is "principal" legally you cannot claim ignorance of its existence if the trademark holder were to go to the extreme of attempting to impose significant fines through the court system. A federally registered trademark on the "Principal" register gives the owner the benefit of presumption of due notice from a legal point of view. Above all, do not use the domain name in a trademarkllike manner (i.e. see my federally registered trademark SeniorHealth.info - where the domain is always used as an adjective rather than as a noun).. If approached by the trademark owner about your domain name NEVER offer it for any payment. That is a common "trick" used to "prove" bad faith. I.e. "Your honor, upon contacting the domain owner he offered it to us for a price, thus we consider this a clear indication of bad faith". As an owner of the first dot info federally registered name since the landrush (supplemental register) and with a pending Principal register dot info in the works, I would advise you that its not worth the worry - get rid of it since you haven't done anything with it.
In addition, keep in mind a trademark owner can LOSE their trademark if it can be shown they did not "enforce" it. Thus many people wrongly assume aggressive tactics when it fact it is a legal requirement to "go after" trademark infringement in order to maintain the trademark.
If, however, your are bent on developing, you should study the recently changed trademark classifications (just phased in 2002) and will need to understand how to relate those categories to the older trademark's category. Use in a clearly non-confusable and different category is allowed.
Skylark

**skylark** · 07-15-2002, 08:36 PM

However after looking through the trademark office filing, I have found that the people holding all of the other TLD"s are not even the holder of the trademark name! So I guess I don't have to worry about them complaining I am violating their trademark!
Earl:

Check the original date of the domain name holder against the date of first use indicated for the trademark holder. If the domain names were owned prior to the first date of use (if a principal trademark) the arbitration hearing would be more kind. However, a domain name bought after federal registsration is more easily attacked as being bought in bad faith.
Skylark