Is it safe to do this?

[Raider]

Lets say I have a single word domain, "Diamond.com" which relates to a material, (it's not the domain) The domain is currently showing Diamond Jewelry results on a parked page.

Question; Would it be safe to go into Tess and contact the other trademark holders NOT related to Diamond Jewelry to solicit the sale of my domain? or am I asking for trouble?

Thanks.

 

[flamewalker]

TM holders for the one word term for other uses? It's definitely risky... if it is a descriptive term such as Diamond, you might be ok but I personally wouldn't recommend doing it.

 

[HuntingMoon]

you should be fine because the "material" is usually an overly broad generic word. check with your attorney of course.

 

[draggar]

I think it is a bit risky.

you should be fine because the "material" is usually an overly broad generic word. check with your attorney of course.

Tell that to the owner of Decal.com

http://www.dnforum.com/f26/latest-reverse-hijacking-decision-decal-com-thread-308017.html

Yes, Berryhill did a great job of defending it and they got to keep it but look at how much it cost them.

 

[EnricoSchaefer]

Generic or descriptive domains are supposed to be safe from trademark allegations, right? Wrong!

There is always some risk created by contacting trademark holders directly, if for no other reason than you might be hit by a bogus UDRP or ACPA threat. However, you can developing effective language and strategies to reduce your risk of an involuntary transfer. Obviously, arranging a sale of an otherwise non-infringing domains directly to trademark holder give you your best chance of sale at the highest price.

Having your lawyer draft the offer letter can sometimes reduce the risk because the offer letter can establish all the arguments why the UDRP and ACPA are not at issue. Too many lawyers simply have no idea how the UDRP really works and file frivolous UDRP arbitrations our of ignorance. Educating the trademark holder and their attorneys is important, so that they don't make a dumb decision to jump right to the UDRP.

There are also strategies you can put in place on the development side to reduce your risk. Establishing a more definitive non-infringing use by putting content on your web site is perhaps your best protection. Parked pages can, for instance, start serving up ads for hosiery which might raise trademark questions for the trademark holder for "diamonds" (see below)

DIAMONDS Goods and Services IC 025. US 022 039. G & S: Clothing, namely, all kinds of hosiery Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 79023179 Filing Date March 6, 2006 Current Filing Basis 66A Original Filing Basis 66A International Registration Number 0883119 Owner (APPLICANT) FALKE KGaA FALKE Beteiligungs oHG, a German partnership, as general partner LIMITED PARTNERSHIP FED REP GERMANY Oststrasse 5 57392 Schmallenberg FED REP GERMANY Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

Parked pages serving up PPC links often become Exhibit A to a UDRP proceeding or ACPA litigation. They always create risk since you have a very limited ability to control what ads are served up. We are currently working with GAP, INC to sell gap.org, a non-profit group called Global Alliance of Performers. The gap.org web site itself establishes the non-infringing use. We made sure that they understood that there are no trademark issues raised by our client's use or, more importantly, our client's attempt to sell.

Anyway, your domain is worth big money. Don't take unnecessary risks. Contact your attorney and invest some money in a strategy which increases your chance of sale by allowing you to go directly to trademark holders and reduces your risk of an involuntary transfer. Good luck!

 

[jberryhilljberryhill is verified member.]

Would it be safe to go into Tess and contact the other trademark holders NOT related to Diamond Jewelry to solicit the sale of my domain? or am I asking for trouble?

I have two situations similar to this type of fact pattern. On the one hand, seeking expressions of interest from others who might be interested in the domain name, while the domain name is being used for a non-infringing purpose, should be fine.

From the perspective of the folks you'd be contacting, though, the situation appears to be very different, and in observing these sorts of situations over the years, they will nearly uniformly attempt to work your contact into a cybersquatting claim. When that happens, the best you can hope for is that they pursue a UDRP, since a court action will grind you down regardless of the merit of your position.

One of the leading cases where this sort of thing has gone south is Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001). Virtual Works Inc. was a software development company which had for years used vw.net. When they were winding up the company, they were contacted by a local Volkswagen dealership to see if they would be interested in selling the domain name. Thinking that the VW corporate parent would likely prefer to have the domain name instead of a local dealer, the Virtual Works folks contacted Volkwagen to see if they wanted to buy it...

http://court.osdir.com/F3/238/238.F3d.264.html

Berryhill did a great job of defending it

Thanks, but.... a chimpanzee could have defended that case.

Although chimps can be a bit unpredictable. Orangutans are generally more focused, but if you want to be more aggressive, try a baboon.

 

[Theo]

Although chimps can be a bit unpredictable. Orangutans are generally more focused, but if you want to be more aggressive, try a baboon.

Lance Link, fave show as a kid

 

[jberryhilljberryhill is verified member.]

Nice video. I think they opened for the Dead at Red Rocks one year.

 

[Raider]

I know it's late, But I just wanted to thank John and everyone else for their input.