trademarked domain names?

[updatedsports]

What happens if you register a trademarked domain name and sel it?

 

It depends on the trademark strength and the sales contract.

For example, "apple" is a trademark in computing - but it has weak overall protection as they cannot prevent a fruit seller referring to an item of fruit as an apple.

If you don't have the buyer indemnify you in the sales contract, it is possible that if they are sued - they could, in turn, sue you.

 

[updatedsports]

what about with .ws domain names. If for example, NFL.ws was available and I register it. Could they sue me or take the name away from me?

 

tld's have nothing to do with their ability to sue you. Its only the UDRP that may or may not apply to certain cctld's.

 

[MattyP]

In regards to being sued over NRL.ws. Wouldn't it be rather hard to sue if the name and site pertained National Folk Lore.


I gather that National Football League could only sue if a web site with the same or similar initials actually tried to profit from it's image. The same could be said of other trademarked names.

While not having any real idea, it seems to me, it makes sense that if you don't infringe on anothers image or products that they have little grounds to sue.

Matt

 

Thats where your defense comes in - if you had a reason for registering it (not a contrived one) then you could argue it. But "NFL" are famous initials like "IBM" - so without a good defense it could be difficult to convince a court you did not register to profit from their trademark. They could also look at other domains held and any patterns of sale etc to form their opinion.

 

[MattyP]

Some very good points.

Let me see if I understand though.

Are you saying that if you had NFL.ws and said it stood for National Folk Lore you may convince a court of your sincerity.

But If you had NFL.ws, IBM.info. NBC.net, McDonalds.cc you may be setting a pattern that the jury may deem as proof that you are indeed infringing or intending to infringe of others trade marks.

Matt

 

Yes matty, if there was a pattern of blatant famous tm infringes then it would be right and proper for the court to infer that the registration of nfl.ws was made in bad faith.

Sadly, this is what happened with fisher.com - the domain holder also had the (rare) family names ebbay.com and googel.com which the courts took to be typos of famous tm's and thus illustrative of an abusive pattern with the very common name "fisher".

 

[AMERICAR]

Would anybody realy try to defend a .WS anyway.

I would just give it up, not that i have any.

 

given the prices .ws's sell for - its highly unlikely it'd get that far (they're not exactly traffic magnets either).

 

Originally posted by safesys
given the prices .ws's sell for - its highly unlikely it'd get that far (they're not exactly traffic magnets either).

:laugh: unless the company was doing business in Western Somoa

 

[Tee]

Hi safesys. Since even most extremely generic names have trademarks on them, and someone could always sue somone even with the flimsiest of cases, leaving the seller in turn open to be sued by the buyer, isn't it always good to have the buyer indemnify you in a sales contract? How much does it cost to get them written up?

 

I've seen boiler plate sales contracts on the net before now that you could use (try a search on some of the main se's).

A lawyer would most likely cost a few hundred dollars to write one up that you could use time and time again based on the laws of your locality.

 

[mole]

internetnews was trademarked by a large company. But our dear old friend Christian retained it in a WIPO, see www.icann.org forum.

My feeling is that the case is fast weakening for tm holders with regards to domains. It makes very weak sense.

apple.info and apple.biz ... for example, just anal intepretation of tm law. Internet law is now getting a whole lot smarter.

So long as you don't show bad faith in trying to benefit from that tim, you will be okay.

 

[updatedsports]

so what if i had nfl.ws and i put it on ebay. Could i get in trouble for it. If the company that owns the trademark never picked it up, shouldn't anyone be able to?

 

[heatfan]

I have one question If I may...


What happens if there is a TM on example to-go (with hypen)

and if I register togo.xxx (non hypen domain) , would they sue my ass off... ?

 

[mole]

Originally posted by heatfan
I have one question If I may...


What happens if there is a TM on example to-go (with hypen)

and if I register togo.xxx (non hypen domain) , would they sue my ass off... ?

Sueing costs money. And they could lose even with a TM in UDRP if you have shown you have not acted or manifested bad faith in trying to profit from associations with the name of that company.

Let them approach you if they want the name to replace their lame hyphen version.

 

In the same sense, how would you approach a trademark holder that does not own the .COM (I own the .NET) but they have a different domain that contains the tm. E.g.

I own thisword.net (not really)
They own thisword as a trademark and thiswordinternational.com as a domain.

 

[mole]

There are clear signs that WIPO and UDRP are beginning to realise how ridiculous people can be in claiming rights to everything.

Reverse cyberjacking is an already well know fact.

You can argue till the cows come home, but if can't prove bad faith on the part of the registrant, you've lost the case, no matter how big you are (see the Nissan.com case)

Just got to be careful on the bad faith part though.

 

Bad faith? LOL
What more vivid example than contacting the owner of the tm - as above in my example - to sell the domain to them.

Please read what I mentioned there and I'd appreciate your feedback.

BTW, is that Sir Francis Drake in your avatar?