Do Not Register Trademark-infringing Domain Names – With David Weslow

How risky could registering a $10 domain name be?

Every day new domain name investors and speculators overlook the financial risk associated with registering a domain name that infringes on an existing trademark – a mistake that could cost them more than $100,000. And it’s happening at an increasing rate with the new top-level domains available for registration.

If you’re a domain name broker or an experienced investor that regularly receives emails from new investors asking for help or valuation – and the portfolio is full of trademark-infringing domain names – this is the video to refer them to.

If you’re a new domain name investor or speculator, learn how to avoid the mistake that has the potential to financially bankrupt you.

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About the Interviewee

David Weslow
David Weslow
David Weslow focuses his practice on litigation, prosecution and licensing of trademarks, copyrights and domain names. A former software and web developer, he regularly handles cutting-edge issues involving law and technology.

Weslow provides counsel on intellectual property, technology and related product and service distribution issues to clients in fields such as hardware and software development, content development and publishing, consumer and paper product manufacturing, financial services, and Internet retailing and hosting.

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David Weslow Interview Raw (Non-Edited) Transcript

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Watch the full video at:
http://www.domainsherpa.com/do-not-register-trademark-domains/

If you are a domain name broker or an experienced investor that regularly receives emails from new investors, asking for helper valuation, and the portfolio they are sending you is full of trademarked domain names, this is the video to refer them to. If you are a new domain investor or speculator, the biggest mistake you can make is discussed in this video, and you better pay attention because it can bankrupt you. This show will tell you why.

Michael Cyger: I have three short sponsor messages before we get into today’s show.

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Here’s your program.

Michael Cyger: Hey everyone. My name is Michael Cyger, and I’m the Publisher of DomainSherpa.com – the website where you come to learn how to become a successful domain name investor and entrepreneur directly from the experts. Every day new domain investors and speculators make a mistake that could cost them more than one hundred thousand dollars simply by registering a ten-dollar domain name. And I am amazed, but it continues to happen every day, and at an increasing rate with the new top-level domains available for registration. Today we are joined by past Sherpa, David Weslow, who is a Partner and Attorney with Wiley Ryan.

David specializes in domain name and intellectual property law. David, welcome back to the show.

David Weslow: Hi Michael, thanks for having me back on.

Michael: It is great to have you. I want to start off by saying that this is not legal advice. While David and I are discussing a very important legal issue, this is general information only. And if you are a domain name investor and you are faced with one of the issues that we are going to discuss today, consult an attorney for your specific issue and advice.

All right David, first question for you. Let’s get a definition of terms. What does it mean to register a trademarked domain name?

David: So, strictly speaking, that refers to the registration of a domain name that include, that is identical to, or confusingly similar to someone else’s trademark.

Michael: Okay, that sounds pretty simple to understand. And is that against the law to do or is it frowned upon? How do you define that?

David: So there are really two primary legal claims or issues to be concerned with in registration of domain names. One is cybersquatting. The second is trademark infringement. So, in relation to cybersquatting, and that would cover things like a UDRP or the new URS for new gTLDs, or a cybersquatting lawsuit. Those claims relate to whether or not the person or company registering the domain name has bad faith intent when they register the domain name. Now, that is a little bit different from a trademark infringement claim, where the intent is less significant and the court or administrative body will look at whether the use of the domain name is likely to cause consumer confusion.

I think for today’s show we will focus on cybersquatting, and there it is important to keep in mind the big issue is: what is the intent of the registrant at the time of registering that domain name?

Michael: Okay. And so, the intent means that I am going to register a domain name, like let’s say Oracle. A bit software company. If I am going to register Oracle.guru and I want to sell it back to Oracle, that is my intent. That is against the law and Oracle can file an anti-cybersquatting lawsuit against me for trying to do that.

David: That is right. So, in that hypothetical, your intent would likely be viewed by a court as being bad faith intent to profit from the trademark significance of that domain name. So, in your mind, at the point in time you registered the domain name, you were thinking: “Well, I am aware of this trademark. I am going to register the domain name and sell it to them, presumably at a profit, not for the hand registration fee.” So that would be a classic case of cybersquatting that would likely be viewed as violating both the UDRP and the URS if this was a new gTLD, and then also potentially could subject you to a lawsuit under the Anti-Cybersquatting Consumer Protection Act, as you mentioned.

Michael: Got it. So, clear intent to register a trademark that is already registered by a company with bad faith to profit from that domain name. That is what we are talking about here. And what is the big deal about registering a domain name? Like what is the worst that can happen to someone if they do register a domain name with a trademarked company name, trademarked product, service, or, let’s say, a sports team?

David: Right. So, taking the possibilities in terms of the escalating consequences, if this is a new gTLD domain such as .GURU that you mentioned, all new gTLDs are subject to the URS. So that is the Uniform Rapid Suspension Procedure. The result of that procedure would be the domain name would be suspended for the term of the registration, meaning it would not function. The domain name could also be subject to the UDRP, which is the Uniform Domain Name Dispute Resolution Procedure. If case under the UDRP was successful, the domain name could be transfered to the claimant or cancelled if there was a practical matter. The typical result is a transfer of the domain name.

You could also be subject to a lawsuit under, in the United States, the laws that Anti-Cybersquatting Consumer Protection Act (ACPA). Under the ACPA, registration of a domain name in violation of the act can be subject to up to one hundred thousand dollars per domain name in statutory damages. Also, attorney’s fees and also a transfer of the domain name. So, the consequences can be significant.

Michael: So, if I go out and I am thinking all these new top-level domains are my new gold rush, I am going to go register Google.guru because I know how Google works and I am going to talk about it on the website or I am going to sell it to somebody. I know everybody loves beer, so I am going to go register Budweiser.app and I am sure somebody will create an app for it or maybe Budweiser will want to buy it from me. And I am going to register Seahawks.sports because the Seahawks just won the Super Bowl and they are the number one team. They are going to dominate for the next few years.

I can actually have multiple ACPA lawsuits filed against me. I could lose a lawsuit, have to pay up to three hundred thousand dollars or one hundred thousand dollars per each one of those if they wanted to take me to court, and I could have to pay their attorney’s fees on top of it.

David: Yeah, that is right. And what is important to keep in mind: in each of those cases you mentioned, it was clear that in your mind your intent when registering the domain name was to trade on or to profit from the trademark significance of the domain name. So, maybe a different outcome if you have never heard of the trademark. Maybe you did not know the Seahawks. Maybe you are in a different country and somehow you did not realize they just won the Super Bowl. Now, in a court case, you could potentially be deposed. You could be potentially required to come into court. So, it is important to keep in mind that what is in your mind at the time you registered the domain name may actually come out, and if so, yes, you could be subject to all those things you just mentioned.

Michael: Yeah, and it could come out because I could be forced into the deposition, which means that I need to go someplace and swear under testimony, under perjury that what I am about to say is what was my intent when I registered the domain name.

David: That is right. So, obviously in a UDRP proceeding or a URS proceeding, there is no live testimony. There is no depositions. There is no actual trial. So, in those proceedings, the panelist is looking for indicators of what your intent was. So, often they will look at: “Well, what did you put up on the website? Was it possible that anyone on the face of the earth did not know that the Seahawks just won the Super Bowl?” Things like that. And while you might not be hauled into court and forced to testify under oath in a UDRP proceeding, the same action that violates the UDRP could potentially violate the ACPA under US Federal Law, which could result in you being pulled into court and being forced to give that sworn testimony about what you were thinking when you registered that domain name.

Michael: That makes sense. And if I lose a URS or a UDRP case, that becomes public information, such that if I continue to do this, they are going to look at past decision that have involved me as sort of a modus operandi (MO) of the way I operate my domain name investing business potentially.

David: Yeah, that is right. So, both under the UDRP. We have not seen the URS. It is just getting started, but presumably the same principle will apply that if you have been found to have violated the UDRP that is evidence in a subsequent proceeding of your bad faith intent in relation to a separate domain name in relation to the ACPA. The Federal Law actually states that a history of trafficking in domain names that violate trademarks in essence is also evidence of bad faith intent under that law.

Michael: Okay. All right, so now we know cut and dry what the definition is. We know black and white what the issue is and what the consequences can be. So I want to look at the gray area between, David. The Digital Media Law Project says, “Courts have consistently protected the public’s right to use the trademarks of others in order to engage in criticism, commentary, news reporting, and other forms of non-commercial expression.” So, if I register a domain name and I have good faith intent to create a website in one of those areas, do I have to worry about registering the domain name if it includes a trademark?

David: Yeah. Again, it is important to distinguish the legal risks or the potential claims between a cybersquatting claim, which, again, relates to what was your intent at the time of registration or use of the domain name and the potential other claim of trademark infringement, which would relate not to the act of registering or trafficking in the domain name, but in how you use it. So, first, if we talk about cybersquatting, in relation to the UDRP and the ACPA Federal claim, the first issue would be, in the situation you mentioned, is: “Was the intention to use the domain name in a non-commercial manner?” And then: “Was the domain name actually used in a non-commercial manner?”

So, for a criticism site, is the site actually non-commercial and used to express real criticism of the trademark owner or is the criticism secondary to the registrant’s intent to make money from the domain name? And that is an important issue, both in dealing with criticism sites and with fan sites. Now, if the domain use is truly non-commercial – so, again, in relation to cybersquatting, what was your intent? And if your intent, ultimately if you were under oath and asked what were you thinking at the time of registration, and your intent – your response – under oath would be: “Well, I had a bad experience with that particular company. I wanted to express what happened, but no, I had no intention of putting up ads or selling the domain name to them or monetizing the site in some other manner,” then that may well be a non-commercial use that could qualify as either being exempt from the UDRP or the ACPA.

Now, if you overcome that hurdle of your intent and your use as truly non-commercial, it also depends on the domain name. Some UDRP panelists have found that the domain name itself must express that criticism. The classic example would be adding ‘sucks’ to the trademark. Some panelists have said, “Well, if you have done that and you have used the site in a non-commercial manner, it is not subject to the UDRP,” but there is really a split there. Other panelists have said, “Well, the domain name may yet be subject to the UDRP based on the other factors.” So that is a bit of a gray area. Under US Federal Law, assuming the use is truly non-commercial and there is critical content of the trademark owner, it is less likely to be found to have violated the ACPA, so less likely to be cybersquatting. There may yet be a trademark infringement claim that is going to relate to: “Is there a likelihood of consumer confusion raised based on how the site is structured, how it looks? Will be think there is an affiliation?”

Now, if it is a criticism site and it is legitimate criticism, probably not, because most people would not think that someone that is saying not favorable things about a company has some relationship to the company. But if it is light criticism coupled with ads, it could actually be a cybersquatting issue.

Michael: Yeah. All right, so when .SPORTS becomes available, if somebody goes out with the intent of building a fan blog on SeattleMariners.sports or maybe Mariners.sports, or something with a team name in it, that requires all the conditions that we just talked about. It needs to be non-commercial and it needs to state that it is not affiliated with the official organization.

David: Right. So, if the true intent – again, if you were ultimately, worst case scenario, pulled into court and you are under oath and your true intent – was not to monetize the domain name, but just to talk about what a rabid fan you are of whatever team that is, then that is unlikely to be bad faith intent under the cybersquatting act. It may still be trademark infringement, because the way you use the trademark may be found to have caused a likelihood of consumer confusion. People may think that you are sponsored by the team or that there is some affiliation or some relationship, so that could be trademark infringement even though it is not cybersquatting.

Michael: Got you. But if I registered Baseball.sports and I love the Mariners more than everybody else and I featured them more than anybody else in my commentary, but I also talked about other baseball teams as well, I would be fine to sell advertising on that domain name because it is not a domain name that uses a trademark. Is that correct?

David: That is right. So, you asked, “What was the definition of registering a domain name with a trademark,” and we said, “it was where the domain name was identical to or confusingly similar to someone else’s trademark,” so there Baseball.sports could not be a trademark when used in relation to baseball information. Now, if someone uses Baseball for recipes or something that is not baseball-related, then it is possible that there is a trademark for baseball as related to some other field that is called an arbitrary use of the word, which would be an arbitrary trademark, but that is not the example you gave. You are talking about using the word for its generic connotation, so that domain name should not be subject to a UDRP or other types of cybersquatting claims.

Michael: Great. Okay. And if somebody gets really excited and registers a bunch of sports teams or company names in all these new top-level domains, and then they start to get seize and desist letters or companies just pass right through that option and go directly to a URS and suspend the domain names, or a UDRP and get the domain names taken away, or the ACPA lawsuit, the cybersquatting lawsuit, what is that individual risking?

David: Worst case scenario, up to one hundred thousand dollars in statutory damages per domain name, plus attorney’s fees. It really depends on who the trademark owner is, whether they will take that step, but that clearly is a risk that that could happen. As we have talked about, if there are trademark names within someone’s portfolio, then that also can cause problems for other names. If, in one proceeding, evidence that the same registrant owns other domains that incorporate other companies, trademarks can be evidence of cybersquatting, both under the UDRP and the ACPA.

Michael: And this is not the show to recommend how people should structure their domain investing business, but if there is a newer investor that has not formed a legal entity to protect their personal assets and they get hit with a hundred-thousand-dollar lawsuit, that could potentially bankrupt them. That could take away everything they have. That could create a financial situation for them and their family that is going to be hard to come back from.

David: Yeah, that is right. And one thing that not a lot of people realize is, under trademark and other types of intellectual property law, even if there is a corporate structure in place, sometimes think of the corporate structure will insulate the people involved and the company. So, if you have an LLC, they think: “Well, I cannot held personally liable.” If you, as an individual, are actively involved in whatever the act of intellectual property infringement was, whether that is cybersquatting or trademark infringement, or copyright infringement, many courts say that you can be held liable individually, apart from that corporate structure.

So, in this context, even if you have an LLC, that is not necessarily going to protect you from that worst case scenario that you mentioned.

Michael: Great point that you bring up there, David. Let me ask you about CCTLDs. Country code top-level domains. I think people in countries other than the United States may not be aware of trademarks of large companies in the United States or they may be aware that a lawsuit in the United States cannot reach over to other countries. A personal example from Domain Sherpa. I noticed, two days ago, DomainSherpa.in – the country code TLD for India – was registered. DomainSherpa.in. And right now, the registrant that appears to be K. Rajagopalan has registered it. It is parked. It is displaying advertising and it has a banner across the top that says, “For purchase or lease.”

I own the trademark for DomainSherpa. It is clear what DomainSherpa does. We have reach across the entire world. We have readership in every country. What could happen to this person that has registered DomainSherpa.in and are they allowed to do it just because they are in another country?

David: Right. So, country code registries do not necessarily follow the UDRP. However, out of the 252 country codes, I would say the vast majority have a UDRP-like policy that is very often almost identical. And what is interesting is a lot of country codes adopted the UDRP, but did make one change, and that is in the third element of the UDRP that the registrant must have registered and used the domain name in bad faith. Under country code policies, that is often changed to ‘or’. The practical implication is that it is actually easier in a lot of cases to win a UDRP under our country code policy than it is under a generic top-level domain using the UDRP.

So, in this case, it sounds like the registrant has a real issue under the UDRP and that you, as the trademark owner, could likely pursue a claim under that country code policy. The registrant could also have liability under other laws. We have talked about the US Anti-Cybersquatting Consumer Protection Act and the US Federal Trademark Act. There are similar laws in other countries, so they could also have the risk that you could pursue a legal claim through the local courts.

Michael: Okay. So, I do not know who this person is. I hope they watch this show and that they realize that they made a mistake and they either drop the domain name or transfer it over to me, or something, because it is upsetting to me and I am sure it is upsetting to hundreds of thousands of other business owners that face the exact same situation, where a new investor comes in and think that they can profit off of something that has built up brand equity and value in the marketplace. But ignorance is no excuse for making this mistake. Is that correct, David? Can this person respond to a UDRP and say, “I did not know it was a trademark. I am sorry”?

David: They certainly could and we see that in the context of the UDRP because, again, there is no sworn testimony. There is no in-person hearing. It is all on paper, and often times they are defended by the registrant saying, “I just had never heard of the trademark owner.” It often comes down to, in UDRP cases, “Well, what does the paper trail show?” So, how was the domain name used? In this case, there are ads that, I think, are specifically tailored to your site, so it would appear that they have structured the website that they have put up to gain compensation based on clicking and thinking that there is some relation to your site.

So, in the UDRP context, that would be evidence that they actually were aware of your show, of your trademark. It is hard to say how it might come out if they provided some evidence that said they did not have bad faith intent, but here, the paper trail would seem to suggest they knew what they were doing and the UDRP panelist might be disinclined to believe them that they have never heard of you when the way they use the site suggests otherwise.

Michael: Yeah, so they can just lie and claim ignorance, but they might still lose. And if they are upfront and truthful about it, then they are definitely going to lose. Either way, ignorance is not necessarily a way out and a way to keep the domain name and a way to profit from it.

David: Yeah, that is right. And I would say in those cases where the response to a UDRP complaint is something that is less than forthright, very often that forces the claimant to consider: “Should we just take this to court? Does this mean that we are not going to get the result that we want out of this proceeding and do we just need to go to court because it is less likely that someone could be dishonest in court? We can reach the same result, which would be a transfer. The domain name could potentially get something more, including monetary award and attorney’s fees.” So, sometimes I think people do not realize that by trying to avoid the result of the UDRP proceeding, they actually are forcing the claimant to consider their court options.

Michael: All right, so let’s assume that most people in the world are of good faith. They want to register good faith domains. They want to stay on the right side of the law. During the registration process, as they are trying to think of great domain names to register that might have value to other companies in the future, how can someone not be ignorant when they are registering domain names that might include trademarks?

David: Right. So, all trademarks are categorized on what is called a spectrum of distinctiveness. On the one end, there are coined words. These are words that do not exist in the English language. Something like Verizon. There is really never going to be a good reason to register a domain name that incorporates a coined word. It is going to be very hard to establish you had good faith intent when registering that type of trademark. Moving down the spectrum are arbitrary trademarks. So that is where the word exists in the English language, but if it is used in some arbitrary manner, it can be a valid trademark. Apple is the classic example.

So, apple in relation to fruits cannot be a trademark. Apple in relation to computer products or digital media obviously is a very strong trademark. If you are registering words that you might think are generic, under trademark law, it really depends on how is it being used. Under trademark law, it is not generic and therefore exempt from trademark protection, unless you consider the use. So, a generic word from a trademark sense is where the word is being used as the name of what is the genus of the goods or the services.

So, if you are registering those types of words, there is always a possibility there may be a trademark. It is a great idea to do a trademark search. Make sure you are not running into someone who is using that word in the arbitrary sense that has given them trademark rights.

Michael: Got you. So, if I register Apple.info, and I may have good faith intent to have apple orchards or things like that, that might be fine. But if I am registering AppleComputers.com or AppleComputers.biz, or I am registering AppleHDTV.com, that is clearly a domain name that associates with computers and Apple Computers’ trademark.

David: Yeah, that is right.

Michael: Okay, perfect. Now, what if I look through my portfolio today, David, and now that I have watched this show and I am educated, and I think, “Hey, these domains might be problematic,” what should I do? What do you think should be the next step?

David: Yeah, it is hard. I would say take a close look at them. Look at how you have been using them. Revisit what you were thinking when you registered them, because, again, that is for cybersquatting, for UDRP, URS, or ACPA, the claim really is: “Well, what was your intent when you registered them?” So, try and think back. How did they come into your portfolio and what was your intent? And then, how are you using them now? There are UDRP panel decisions that have found that willful blindness of a trademark does not exempt you from the UDRP.

Now, that most frequently comes up in the case of automated registration, using something like a drop catching service to register names. There are UDRP panelists that will say, “Well, you should have searched for trademarks.” And if you used an automated service, then you were willfully or knowingly blind to the trademarks. So then the name can be subject to a UDRP. Now, the decisions have gone both ways on that point, but there is a potential risk there.

Michael: What tools can people use if they want to go search for a trademark, David?

David: Trademark 24/7 is a great service. Easy to use. Trademark247.com. You can also go directly to the US Patent and Trademark Office. That is USPTO.gov. The interface is slightly less intuitive, but it is there. That is the master source of US trademarks. All or nearly all National Governments have their own trademark database that is online as well. The European Union. There is a single trademark registration that covers all of the European Union. The abbreviation for that agency is OHIM. If you do a search for it, you will find that. It is a great idea to check for European community trademarks as well.

Wherever you are located in the world, your country likely has an online database of trademarks. It is a great idea to check there as well.

Michael: All right. And if people have questions and they want to speak to an attorney, I know that you both work on retainer and probably hourly rate. How can people contact you, David, if they want to discuss their personal situation?

David: I am reachable, of course, at DavidWeslow.com or Twitter @DavidWeslow. I am happy to chat with anyone. I know you have also had some other great attorneys on your show as well that they could reach out to, or if they have an attorney they regularly work with. I think it is a great idea if they are about to register a name or now, in relation to new gTLDs, there are claims notices that at least for the first 90 days of new gTLDs. If you are about to register a name and you see a claims notice, which means that that domain name may conflict with someone else’s trademark, it is a great idea to talk to an attorney and get a handle on whether or not you really should proceed with that registration.

Michael: But just because you do not see that notice when you are registering a new top-level domain, like .GURU or something, does not mean that it is clear to register. Does it, David?

David: No, that is right. So, it is important to keep in mind: claims notices are generated for trademarks that are registered in ICANN’s Trademark Clearinghouse, which I think as of last month there was under thirty thousand trademarks in the clearinghouse. You compare that to the US Patent and Trademark Office – it registers about 200 thousand trademarks per year -, it shows that it really is a small fraction of trademarks that are in the clearinghouse and that are going to generate claims notices. And then the claims notices are only mandatory for 90 days, so that is a great point.

If you do not receive a claims notice, it does not mean it is clear. If you do receive a claims notice, it is worth pausing and doing some deliberative thinking about whether or not you should go forward.

Michael: All right.

David Weslow, Partner and Attorney with Wiley Ryan. Thank you for coming on the show, explaining trademark law as it relates to domain names, thanks for preventing others from making the mistake that so many in the past have made, and thanks for being a return Domain Sherpa.

David: Thanks for having me on again, Michael.

Michael: Thank you all for watching. We’ll see you next time.

Watch the full video at:
http://www.domainsherpa.com/do-not-register-trademark-domains/

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142 Responses to “Do Not Register Trademark-infringing Domain Names – With David Weslow”

  1. Ann says:

    Hello,
    I just got an email saying the domain I bought 6 years ago is a trade mark I checked and they just registered the trademark on 2016 and also my website was build on 2010 and them on 2014. When I build my website them domain name had a notice that if someone wanted to buy the domain name could get it and had any information on it. Now they are saying that I got the domain name on bad faith to try to confuse the users to go to my website instead. How could that be possible if they didn’t even had a web site or nothing when I bought mine. Can they take legal actions against me if they just registered the trademark and build them website 4 years after mine?

    Thank You

    1. You don’t need to be right to sue or file a UDRP.

      It sounds like you need legal assistance, not comments from non-lawyers who don’t have all the facts of your case. And lawyers aren’t going to post comments on a web page.

      David Weslow is a great attorney. If you watched his interview and think he can help you, try contacting him.

      Good luck.

      1. Ann says:

        Thanks for your reply.

  2. Nnamdi Okore says:

    Hi, Michael.
    I recently registered localrealtor.co.uk. I listed the domain on namepros for sale and got a reply that the name is a registered trademark. I want to be honest and I dont want any case hanging on my neck. I am looking for ways to give this domain back to the company, what do I do? I need to get this domain off my portfolio.
    Thanks.

    1. Realtor is a proactively defended by the National Association of Realtors. It’s not worth your time or effort to try to “give it back” to them. Just delete it and move on.

      I did a whois lookup and see the domain name is registered at GoDaddy. Here’s how to delete it from your account: https://www.godaddy.com/help/cancel-my-domain-412

  3. Lea says:

    Hello Michael,

    wouldn’t it be enough to register the domain using a private registration and as limited company? Still you will have to provide a personal contact name, but being the registration done by a limited company, if they sue you, win and ask you to pay, then you let the company go bankruptcy. I know that not every domain can be registered by any person or company (eg. you cannot register a .fr french domain using a seychelles limited company because the registrant should be a person or business based in the EU I think, but still you can do that with many other hot country domains or top level ones.)

    How do you see this option? Would that protect me against the issues you mentioned?

    Thanks, great video btw

    1. Hi Lea,

      Bad faith is bad faith, regardless of whether it’s under privacy or not. In addition, once a lawsuit is filed, I believe the court can pierce the veil of whois privacy.

      If your question is simply how to protect your personal assets from bad business decisions, yes — buying your domain names through an LLC or similar legal entity is the right path. Business insurance can be of benefit as well.

      Best,
      Michael

  4. Lee Latner says:

    Best and most painful video I’ve ever watched. I must admit, I’ve been the victim of ignorance in this case. After buying more than 25 city+realtor.com and city+realtors.com, it took 1 of the first 300 realtors that I contacted to set me straight. To me realtor is a generic term, I didn’t realize it’s specific to NAR members.

    I had 2 offers on the one I was calling about before I got the bad news. Michael, I’ve watched years of your previous shows in the past few months. Wish I came across this one before I made the mistake. Thanks for all your help!

    1. Yeah, “Realtor” is one that will beat you up every time. NAR is proactive in their trademark defense, and it’s a mark I *always* recommend staying away from. (There are others that are safe to register domains in.)

      I’m glad you’re finding benefit from DomainSherpa now. Thanks for posting a comment.

      If you want to short cut your learning, I’ve put all my lessons learned in DNAcademy. Ping me through http://www.domainsherpa.com/contact/ and I’ll give you a special coupon if you mention this trademark video.

  5. Walter Dinjos says:

    Hi,

    I just registered http://www.tourhandler.com and I keep wondering how it is that it was available all this time. I also researched it and realised that someone used it around 2004 and possibly 2014. I am just trying to know whether the domain name has a problem.

  6. Mike says:

    Greetings Michael,

    I have a question about domain names.

    I registered a domain name and later found that an identical domain name existed, but with a different extension (a tumblr extension).

    For an example, say my website’s domain name was: “websitename.com” and the other website’s domain name was “websitename.tumblr.com”.

    Would this be a trademark issue?The other site has been online longer than mine. The websites are of similar topics, but the other website is about posting links to other websites (aggregate), whereas mine is daily articles written by me.

    If there is an issue with the way it currently stands? Would I be ok if I changed my website domain to “websitenameblog.com”? How much change is needed before it is not an issue?

    Thanks

    1. I’m not a lawyer, and David Weslow is likely not to respond to generic questions like this.

      The quick answer is that if I own Cyger.com and someone registers cyger.tumblr.com, it may or may not impact me at all as the domain owner. Most likely not.

      Registered trademarks protect a use case. If there’s no registered trademark in any country, then it’s — again — likely not an issue.

      Now, they may say they have a common law trademark on the word. Maybe. Hard to say based on not knowing the word or the use. And common law trademarks are harder to prove than registered trademarks. Again, consult a lawyer.

      Finally, if they’re in commerce using a word.tumblr.com without a domain name and without their own website (not likely), then it’s going to hard for them to prove the three criteria for filing/winning a UDRP, including that you have bad faith.

      Again, consult a lawyer if you’re really worried. Or go watch these other videos to learn more about trademarks, UDRP and bad faith: http://www.domainsherpa.com/tag/udrp/

      Hope that helps.

      1. Mike says:

        Michael,

        Thanks for the quick response. The domain name words are pretty generic and common (two common words together followed by dot com). I don’t want to give out my website name for obvious reasons, but the first word is “all”. For example, it is “all_____.com” with the website niche filling in the blank. Both websites are niche blogs covering similar topics, but like I said, mine is daily articles written by me and the other is an aggregate with links to other website. I have affiliate ads on mine, but saw no advertising on the tumblr site. I don’t see how anyone could confuse the two, especially with different extensions. At the risk of showing my age and ignorance, I’m not really even sure what tumblr is.

  7. Jeff says:

    I tried to go to dnx.com as advertised but it goes to mediaoptions.com and I do not see anything about a auction. Please advise.

    1. This interview was taped in 2014, and DNX.com doesn’t operate any longer. It may be for sale, which is why it leads to MediaOptions.com.

  8. Carolyn says:

    Hello Sir,

    I have question regarding this trademark domains. While researching domain names, I saw Quicktime is trademarked by Apple Inc, checked that on uspto.gov and they have registered quicktime.com and quicktime.net. Then, I saw quicktime.org and quicktime.xyz are registered by different users and available for sale. Do these domain holders will get penalty from apple for infringement or do these domain holders can build a blog/website not related to quicktime.com and stay free from infringement.

    Thankyou.

    1. If you don’t want to risk a UDRP or law suit, then do not register trademarked domain names.

      The only active trademark on “quicktime” is by Apple: http://www.trademark247.com/tm-quicktime.html

      This is not a generic word from the dictionary that multiple companies are using in multiple product/service areas.

      Just because others are making risky business decisions doesn’t mean you should.

  9. Mo Hanzal says:

    Hi Michael,

    I’m a newbie in the world of domains and have found your site to be incredible educational. I think I watched your interview with Ali Zandi (how to sell like Domains like a Super Seller) about 3 times and its inspirational and very motivating. I know this is an old topic so I’m not sure if you are still responding to questions but one that I had after watching this segment was are there any legal issues with buying a domain name for a business that already exists but is not trademarked? So for example lets say there is a company/business called carauctions.com and I found out that carauctions.net is available. Assuming that carauctions.com is not trademarked and the only intent in me buying carauctions.net is to sell on domain auctions (Sedo/Flippa etc) because of the appraisal value of the domain itself or possible business opportunities based on the keyword search volume are there any legal implications to this?

    Thanks in advance for your help and advice and for the great information on your site.

    Hanz.

    1. Hi Hanz,

      To win a UDRP action, the complainant must prove ALL three of the following criteria:

      1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
      2. The registrant does not have any rights or legitimate interests in the domain name.
      3. The domain name has been registered and the domain name is being used in “bad faith.”

      If the domain name you’re buying doesn’t have any trademarks, then you will likely be fine. I say likely because some companies may claim they have common law trademark rights.

      Remember, you don’t have to be wrong to be sued. Know your risks and make your business decisions based on those.

      Good luck,
      Michael

      1. Mo Hanzal says:

        Thanks for you reply Michael. Appreciate the insight and advice.

        Hanz.

  10. I trade a lot of 4L.com domains lately. Stuff like KRME, BCOA, EMSC, etc, etc … I have no intention of putting content on these domains, it is really with the intention of flipping for profit. What if these acronym 4L have trademarks. Would that be a problem? My profit would not be made of of the trademarks value, its really about the 4L.com value.

    1. Could be.

      You ask a very general question, so there’s no way for intelligently answer it.

  11. David says:

    The video was great. Thanks for sharing such great info.

    There is an attorney registered AUTOACCIDENT. (with the dot at the end) as a trademark.

    https://www.trademark247.com/autoaccident.-76225390-1.html

    does it mean no attorney can register any domain ending with ….autoaccident.com (for example: mybestautoaccident.com )

    1. No, it doesn’t mean that necessarily.

      You should speak to an attorney if you’re going to invest in something that might have legal ramifications. Sorry, I’m not an attorney so I can’t advise you.

  12. Himesh says:

    Hi.
    6 month back i have registered domain name Autocad with extension (eg. AutoCAD tutorial ) with TLD and started blogging i have use the software name in my domain name i am not selling anything but displaying ads. i am earning money. In future will it create any kind of problem ??? if so i need to pay them for copyright infringement ??

    i am from india plz help ASAP

    1. Autocad is a well known trademark only owned by one company: http://www.trademark247.com/tm-autocad.html

      It’s the equivalent of buying a domain containing Nike or iPhone.

      I’d say drop it and move onto more productive domains unless you have a clear business use that doesn’t infringe on the domain name owner’s rights.

  13. Joe says:

    Interesting interview but loss of the ability to sue major companies in the market and industry of the trademark with reference to domain names in particular point-Com.

    We know and you should also know that there is a patent that can hide a domain name trademarked and that this domain parking in making money out of this patent and the owner of the trademark nor knows him.

    This happens in front of the offices of all US lawyers and do nothing because the power of that patent signed the silences that is silent and watch it pass without saying anything serious this yes! paid for fools and ready money are lined with domain names to us the fine would be invaluable for life.

  14. Vivek says:

    I registered a domain with a xxx registrar.I got a mail that your domain will be confirmed within some hours,but its been 8 days now my domain is not confirmed.
    Today I checked the whois for the same domain and it was registered with the same registrar by some one else 2 days back.

    What should I do now.This is total fraud.
    Please suggest me somthing.

    1. Contact the registrar and ask them to review the situation. Be as clear as you can in the order of events, and back it up with data. If customer service fails to address your concerns, raise it to management at the registrar.

      Should that fail and they have not addressed the concern to your satisfaction, file a complaint with their local Better Business Bureau or similar organization. If they’re not a member, stop giving them your money and find a registrar that has higher standards for how they treat their customers.

      You also have the right to pursue a legal path if the domain name is valuable enough to justify it.

      Good luck getting it resolved.

  15. Vivek says:

    CASE 1-
    What if a same name is registered by different companies or persons with different extensions,though it is trademarked.
    I have seen many names registered by different companies and trademarked under different classes
    Lets take a case of SAFEX word.Different people have registered the same name with different extensions though it is trademarked.Can one register such names though they are trademarked.

    CASE 2-
    There is some time in which a trade mark owner must registered his name when a new TLD is launched.So can someone register the name when the given time is over and the trade mark owner has not registered his trademarked domain name with the new TLD extension.

    Really confused????

    1. Case 1: Trademarks in the USA are registered per “class” of service. Do more research on that topic or contact a lawyer. We do not provide legal advice.

      Case 2: If you register a domain name in bad faith with the intention to profit from a trademark holder, you’re a cyber squatter and can have a UDRP or lawsuit filed against you.

      If you’re registering a domain name to start a business in a separate class, and it’s not confusingly similar to a trademark holder, then you may be legally in the “right.” Contact a lawyer if you’re unsure.

  16. Kamal says:

    i have one domain with many TLD from long time, now that day one of person start trademark company with .com tld. and they say me my domain is same as him. so give us as low price otherwise they will use trademark policy and catch my domains !

    pls tell me if i have register domain before they person start company and not use with same as him so i can safe or not ?

    sorry for bad english.

    1. Hi Kamal,

      There are three elements that must be met for a UDRP to be approved:

      (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

      (ii) you have no rights or legitimate interests in respect of the domain name; and

      (iii) your domain name has been registered and is being used in bad faith.

      If the domain name your own doesn’t meet all three of these criteria, then you have little to worry about. You may, however, still need an attorney to represent you so at the end of the day it’s a business decision for you.

      Good luck,
      Michael

  17. Simon Larsen says:

    Hello,
    Trademarks do they apply for every country?
    Like do coca cola has the trademark worldwide, and would be able to sue, if I created a coca-cola domain in a country, where they dont have the trademark applied to at the time, but might later?

    Sincerly,
    SImon

    1. Trademarks are registered on a per-country basis.

      Well-known trademarks like “COCA COLA” and “Apple” (especially used in technology) are unique, and will likely cause you legal issues. You should stay away from them or consult an attorney before purchasing.

  18. Alex says:

    Thanks for the broadcast and great comments below. I would like to open the discussion towards the international market. So let’s say there’s an American company Megafuels Inc having as a domain megafuels.com and their trademark registerd in the USA. Then imagine a German company would register megafuels.net, be it in bad faith or not. Then how would the UDRP reason? Of course Megafuels Inc only has right to claim their trademark in the United States, but who knows there the “fake” .net visitors come from? It would be too funny they’d had to put a disclaimer page “Hey, if you’re a US consumer please go away”… So the question really comes down to, which country’s law regulates, the country’s where the offender is registered, the country where the claimer is registered, or always the USA because the ICANN is American?

  19. alex says:

    Hi
    great insights,

    maybe i missed it, but we did not cover the chronology matter,
    i.e domains bought before a trademark was registered.

    For instance, I cannot find a wanted domain in .com , it’s held unused,
    could I register the trademark, then claim the .com ?

    hope it’s clear enough, not english native

    best

    alex

    1. You can register a trademark when your offering is publicly available. Consult a trademark attorney for guidance.

      You cannot make a claim on an unused domain name (regardless of the top level domain) just because you have a trademark. That’s called reverse domain name hijacking.

      Look at the 3 requirements for a UDRP to succeed. They were discussed in this show. If you cannot prove them, you’ll likely lose your case. And look foolish in the process.

      1. alex says:

        Hi Mickael
        Thanks for the precision

      2. Nilmar says:

        Great answer!

        This is a really interesting subject.

        What about if the one who registered the trademark did have their business before you registered your domain with their business name in it (without knowing it) but they didn’t apply for a trademark until years after you registered the domain?

        Do you think that also would be considered reverse domain name hijacking?

        1. So you’re saying:
          1. First person started business
          2. Second person registered the domain name
          3. First person registered trademark

          Is that correct?

          If so, registering a domain name when there’s no registered trademark is fine. That’s not cybersquatting.

          Even registering a domain name when there is a registered trademark is fine if the word is generic and/or can be used for different purposes.

          For example, if I owned Apple.com today and wanted to use it as the name of my apple orchard business in Washington, that would be fine. If I tried to use it for my technology company, that’s not fine. There are 45 classes that you can register a trademark in. You can’t own a trademark for the same word in the same class of service.

          There’s likely a exceptions to every rule. I’m not a lawyer. Consult an attorney for legal advice.

          1. Nilmar says:

            Yeah that’s exactly what I meant.

            So as long as there is no trademark in place when you register the domain you should be safe. (with some exceptions of course)

            Good to know.

            Too bad what counts is the date that you became the owner of the domain and not the date when the domain was registered in the first place.

            I’m sure the owner of Zic.com would agree! :)

  20. khalid says:

    I just registered two domains both are related some trademarks I deleted them does that clear me?

    1. If you deleted the domain names, then you’re no longer the registrant. I believe the UDRP process requires someone to be the registrant of the domain name in bad faith. For an ACPA lawsuit, the complainant would need to prove some aspects which would be difficult to do if you deleted the domain name soon after registering it. I’m not a lawyer nor an expert on legal matters, but you’ve likely taken the right steps to head-off any legal issues.

      1. khalid says:

        Thank you, man, you are the fastest and the best one respond to me in this industry. thank you so much. I feel bad that I deleted 11,000$ domain but it better than a court.
        thank you
        Khalid farig

  21. KMisc says:

    Hi,

    Thank you for this article.I have a question, is a country name considered a trade mark term? I recently purchased Domain ” America.deals” (. Deals as gltd) from godaddy.

    Out of curiosity when I searched this term on other registrar , it shows up “Domain Name matches a Trademark found in the Trademark Clearinghouse. Further conditions apply.”

    Now I want to know whether a country name is a generic term or a trademark and what option do I have if this really infringes any trademark stuff, do I just leave it , after paying a good amount on the domain.  

    Please advice.

    Warm Regards.

    1. There are a few trademarks of “America” as you can see at http://www.trademark247.com/tm-america.html (which is only a list of trademarks registered with the USPTO). If one of these companies paid to include it within the Trademark Clearinghouse database, that would trigger the warning you saw.

      If you do your research, as you should since ignorance is not a valid excuse for breaking the law, and find that your intended use of a domain name does not infringe on the registered trademarks of others then you have a defensible position.

      No one can tell you how to manage your business. Your risk and reward are yours to decide. If you need legal advice, please contact an attorney familiar with domain name and trademark law. David Weslow, as well as the attorneys on this page http://www.domainsherpa.com/domain-name-attorneys/, are a good place to start.

      1. Lisa says:

        Hello,

        Nice topic! Just asking; I am from Europe and own a domainname, I saw it didnt had a trademark yet, but still I do see some companies on the internet using the name. (different companies, from different people but all mortgages niche strange enough and they all own the same last name, they are in different states)
        but nobody made a trademark yet, to keep my domain safe, can I do this even though I am not from the US?

        thanksss

  22. TS says:

    This is great info, i am following up with all of your videos. I watched this video 8hrs after registering http://www.9realtor.com and kept it in flippa for sale. If i’ve watched this video earlier i may save my $ 400 :(.

    Not sure why the domain registrars allowing us to register a Domain Name with trademarks in it.

  23. Eduardo says:

    Hi!
    I have a question. I have a fan site about a game, I don’t want to say the site name, but lets say it’s a fan site about Mario games. I like to talk about Mario, so i created a site called Mario Brazil in my country, with domain mariobrazil .com (remember, it is not the real game). But I discovered that the Brazilian domain http://www.mario. com.br is avaliable. So i purchased it, but only uses it to redirect to my site mariobrazil .com. I speak about all stuff from Mario, so it’s like I’m making free advertisement to them (Nintendo).
    In this case, do you think I can get in trouble? I say in my site that is a fan site, not an official one. I purchaced the http://www.mario .com.br to avoid any competitors to buy the name, but I would transfer the domain name to Nintendo without problems. But Nintendo could put me in trouble just because some people will think my site is official, even if i redirect the traffic from mario.com.br to mariobrazil .com?
    Thanks.

  24. John says:

    Hello there David and thanks for your article.

    I have a quick little question.

    Would it be legal to register and use a domain with a trademark name in it, but only as a part of the full domain name?

    For example a domain similar to this: “find-whatsapp-groups.com” (where WhatsApp is the registered trademark) hosting a forum for people to share their WhatsApp contacts in order to let them team and create WhatsApp groups.

    This would not compete with a service offered by the branded company.
    On the contrary it would probably just drive more clients to them.

    Anyone else knowing about this kind of matter, please feel free to answer.

    Thanks a lot

    1. David Weslow says:

      Hi John — To succeed on a cybersquatting claim under the UDRP or U.S. federal law the plaintiff must show bad faith. To succeed on a trademark infringement claim the plaintiff must show that there is a likelihood of consumer confusion.

      At least one U.S. federal appeals court has held that the addition of other words to a trademark within a domain name makes it less likely there will be consumer confusion. This case may be helpful: https://scholar.google.com/scholar_case?case=3247992985874480529&hl=en&as_sdt=6&as_vis=1&oi=scholarr.

      1. John says:

        Thanks a lot for your information David, you gave me a precious starting point!

        – In case I would like to go deeper than this, where do you advice I should head to?

        – Does this website offer a more in deep private consulting?

        – Are there any institutions or associations or any kind of online/offline entities that specifically monitor this kind of situations (where big corps try to bully small companies over tradermark issues, maybe specifically in the context of domain-names) giving basic advices or at least trying to raise some social indigment when it would be impossible for a small business to fight in court?

        Thanks!!!

  25. Brad says:

    I have another question which can be interesting for everybody else here.

    Example: If i use example (apple) name and i want to sell apples that is ok,then apple can’t sued me.
    Now : If i have chose other category for apple in this case to sell apples did i must register that name like trademark or i not need to register as a trademark because is not related with Apple (technology,computers etc. :) ?

    P.S. To not throw money to pay for trademark if is not related with apple company

    Sincerely

    1. You’re asking legal questions. We do not provide legal advice, only information.

      There are three elements that must be met for a UDRP to be approved:

      (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

      (ii) you have no rights or legitimate interests in respect of the domain name; and

      (iii) your domain name has been registered and is being used in bad faith.

      If you’re not doing one of those things, then you have nothing to worry about. If you’re trying to “game the system” then you’re more likely to have to defend your actions it in court or in a UDRP or URS.

      If you’re just trying to educate yourself, don’t take a shortcut. We have plenty of resources here on DomainSherpa for understanding UDRP:
      http://www.domainsherpa.com/tag/udrp/

      Spend the time to learn from the experts.

      I suggest you watch them or read the transcripts and then contact an attorney if you plan to make a high-value purchase to ensure you’re protected.

      http://www.domainsherpa.com/domain-name-attorneys/

  26. Brad says:

    Hi Brad

    I see domainsherpa.com have TM sign in circle of the logo,and i see nobody can’t take same domain name because you have trademarked.

    Now tell me this: What if domain have R letter near domain?Did this mean that is not trademark, and everybody can use that name ?

    1. There’s no Brad that works at DomainSherpa. Just wanted to clarify.

      https://trademark.marcaria.com/entries/21796637-What-is-the-difference-between-TM-SM-and-other-symbols-

      I’ve not redone the DomainSherpa logos to change from the initial TM to the ® symbol yet, even though our trademark is issued by the USPTO.

      Regarding use, you should speak with an attorney. It’s the same issue that has been discussed below in the comments. If you infringe in the same area as a trademark holder (like “Apple” for anything computer related) you’re going to run into trouble. Don’t have bad faith.

  27. Brad says:

    Hello Brad

    Can you tell to us what this mean in domain status for trademark:

    Status:

    Abandoned-No Statement of Use filed

  28. Brad says:

    Hello Michael

    Thanks for share about trademarks.

    I think this question will not be hard for you :)

    Did Ask word can be a trademark word? I mean if i register ask.global etc. every domain with Ask word that is trademark word? Can i use that word for Q& A community or i must change to other niche which is not related with answers?

    And with my opinion Ask can’t be trademark because is common word. Right?

    1. Hi Brad,

      I think my response here (http://www.domainsherpa.com/do-not-register-trademark-domains/comment-page-1/#comment-4317109) applies to your question as well.

      If not, please clarify.

      Thanks,
      Michael

      1. Brad says:

        With my opinion i can use then word ASK because of your explanation about Apple word. I can use ask because ask is a search engine and i will not use it like a search engine.

      2. Brad says:

        Yes thanks. Now i clearly see that ask can have everyone,is same like a bitcoin.

        It doesn’t look like the word “bitcoin” is trademarked to me

        http://www.trademark247.com/tm-ask.html

  29. Mark says:

    My question is Apple Owns a trademark or not but someone owns a trademark on Mac
    and there is a website called cultofmac or macrumors.
    Android is a trademark of GOOGLE and
    there are websites like
    android authority
    android police
    android central
    jailbreak is a trademark of something and there are lots of websites on them.
    Same works with clash of clans
    Minecraft and allow

    I’m confused please clear out the dust on the trademark knowledge here.
    Why these website are up and running from so long with no problem at all and other faces a problem with these issues?

    1. Mark says:

      Can anybody please reply on this ?

      1. Trademark holders may choose to defend their trademarks or not. It’s their decision, and no one can answer that question except them.

        Some companies defend every potentially infringing use of their marks, while others don’t.

        If you search the UDRP/URS archives for a word/domain, you can generally see if a company defends their marks or not. UDRPSearch.com is a good resource for searching, but I’m not sure if it’s complete.

        1. Mark says:

          thanks a lot for your reply

  30. Joe Gomes says:

    I want to register a domain name with the name of my competitor plus a word that better represents my business. Its trademark has been dropped, meaning it does not use anymore. Would this consider a violation? Eg. business name is Dropbox and the trademark for dropbox is dropped. Can I register dropboxforbusiness.com?

    Your reply would help me a lot.

    Thanks!

  31. Harneh says:

    Hi Michael/David,

    I am watching this video almost a year after it was published. I would really appreciate if you can help me on this. As i invest in domains, i have registered a domain with the intent of selling it to the end user. i bought a cctld domain and .com has not been used yet and is with another domainer. I am sure a very old .com will be very costly for an Indian startup to buy and so i bought .in(ccTLD) because for me it will be easy to make the sale. But when i searched for the name on trademark247.com it shows around 50 trademarks which include that name. Even many domains in my portfolio contains the words which are trademarked. So i have two questions about this-

    1. Should i invest in ccTLDs if another domain investor owns .com. Because if the .com owner sells it to one business and i have already sold it to another, then both businesses will end up fighting for the trademark.(Customer satisfaction is everything for me and i don’t want my customer to get into a situation like this.)

    2. What should a domain investor do as all the names they think of registering are either trademarked or already trademarked name contains that word. For instance, if i buy Crunchy.com and there are many names with the name crunchy on trademark list. Should i buy it? And also if someone has trademarked Crunchy’s and i want to trademark the name Crunchy Bakery, is it possible? Kindly search for the name ‘Crunchy’, you will see many trademarks with this name.

    Your answer will help me a lot. I would really appreciate if you can take out sometime from your busy schedule to answer.

    Best Regards
    Harneh

    1. I know David won’t provide legal advice on a discussion forum, and it appears you’re asking for legal advice for your situation. The best thing you can do is hire an attorney for your advice.

      I’m not an attorney. Here are my thoughts.

      If you invest in domain names that are trademarked, you run the risk of a UDRP or URS case being filed against you, regardless of whether it’s warranted or not. It’s unfortunate, but it’s reality.

      If you’re registering a domain name with clear intent to register a trademark that is already registered by a company with bad faith to profit from that domain name from that company, then you’re a cybersquatter. Don’t do it. That’s the message of this lesson with David.

      There’s a big difference between trademarks like Apple and Crunchy. Both are generic words, yes, but one has one of the most popular companies in history associated with it. You might also want to consider how many UDRP cases have been filed for a specific word/phrase, and stay away from those as the trademark holders may be more diligent in defending their trademarks.

      Good luck. I hope you find an attorney who can help you with your investments.

  32. John says:

    Is Bitcoin domain names (e.g. bitcoin.io) a trademark infringement?

    1. It doesn’t look like the word “bitcoin” is trademarked to me:
      http://www.trademark247.com/tm-bitcoin.html

  33. Jonathan says:

    I won a domain through back ordering service. Created a different website and currently using it as a blog. About a week ago the lawyer representing the previous owner contacted me. Below is the email

    Our client is the owner of the French trademark …….., registered since 200x under number xxxxx and has acquired common law rights in the trademark … from its longstanding use of the trademark.

    Our client has recently been informed of your registration of the domain name …… and believes your registration and use of same infringes on its trademark rights. We, therefore, demand that you transfer said domain name to our client forthwith.

    I have acquired dropped domains in the past but this is the 1st time I have been contacted. What are my options.

    1. From the limited information that you’ve provided, it sounds like your options are:
      1. Give it up
      2. Don’t give it up

      If you choose option 2, then you may have out of pocket expenses in defending it, should it come to that.

      If it’s a high-value domain name, it might make sense to go with option 2 and seek professional advice.

      If it’s a low-value domain name, not worth your time defending, then you might want to cut your losses and move on.

      Good luck either way.

      1. Jonathan says:

        Thanks for the reply. It is not a high value domain, I brought it through a drop catching service because it had some nice metrics and I included it in my Private Blog Network to boost some of my money sites.

        It cost me around $200, so I guess I would just let it go and ask them for the fee that I paid.

        1. I always try to be effective, rather than right. It’s tough sometimes, but makes for better business decision. Especially with my wife. :) (Joke, of course, Erin!)

  34. Hi there, I have the domain name http://www.kosweddings.com since 2008. I have been operating as a legitimate business since then. In 2011 a new company opened a business called exquisite Kos Weddings and trademarked the following ‘Exquisite Kos Weddings – Complete Affordable Everlasting’. Their CTM is figurative, not a word mark.
    They have taken me to court to say that I can not use the phrase kosweddings any more, either as a business name or as a domain name. The Greek court ruled in their favour and I have consequently had to change the entire name, face and marketing strategy of my business.
    At the appeal I would like to prove that I have rights over the name kosweddings a) because I was operating as a business under this name for many years before they started their business, regardless of their figurative CTM and b) that their CTM does not cover a domain name that was previously used.
    Do I have a case?
    Any advice would be appreciated. Thanks.

    1. Hi Emma,

      Sounds like you need a good domain name attorney to help you review the details and figure out a game plan for moving forward.

      These comments are definitely not the place for finding legal advice.

      David Weslow is great. A full list of qualified attorneys is here: http://www.domainsherpa.com/domain-name-attorneys/

      Best of luck,
      Michael

    2. David Weslow says:

      Hi Emma,

      Not all countries recognize a “prior user” defense to a claim of trademark infringement. As Michael mentioned, this sounds like a complicated situation that cannot be appropriately addressed in these comments. Please feel free to reach out to me (my contact info is at http://www.DavidWeslow.com) and I would be happy to discuss.

      David

  35. Sulfen says:

    With so many trademarks out there how is a consumer supposed to know what domains to leave alone? If a normal consumer registers a domain of someone’s obscure trademark but the consumer uses it for something unrelated to their trademark could the trademark holder still successfully win a lawsuit?

    My domain Sulfen.com is related to either a chemical or a chemical company. I don’t have the intention of infringing anything so would I be okay?

    1. Hi Sulfen,

      I see no trademarks in the US: http://www.trademark247.com/tm-sulfen.html

      If there is a trademark in another country (check with your attorney), then you have to consider intent when you registered the domain name.

      If you registered the domain name to start a company that doesn’t have anything to do with another company’s registered trademark, then it should be fine.

      But I’m not an attorney and this is not legal advice. Here you go: http://www.domainsherpa.com/domain-name-attorneys/

      Or, watch the video again. Also, check out:
      http://www.domainsherpa.com/howard-neu-udrp-interview/

      Best of luck,
      Michael

      1. Sulfen says:

        Thank you for this information. Registering a domain looks more complex than what I thought. I am not trying to act anything like an existing company so I should be okay. But it is scary that people could be sued successfully for not being aware of these things.

        Thanks again for the information

  36. Candice says:

    Hi Mike/David, Great video! I have 3 follow-up questions for you on this topic:

    What if you register a trademark with other words attached before or after, such as “GoogleApps.com” or “BestFacebook.com”. Is that legally acceptable to buy/sell/flip?

    Also, what about trademarks that are actually words and have dual meanings such as:
    Fossil
    Diesel
    Chrome
    Galaxy
    Amazon etc …if you buy “Chrome.guru” for example, is that legally acceptable to buy/sell as it is also a word by itself?

    Last question, what about words that are also TV shows or Movies, such as “Dexter” “Avatar” or “Frozen”? Are movies/shows even considered Trademarks?

    Thanks in advance!

    1. Hi Candice,

      First off, your questions are very close to asking for legal advice. We don’t provide legal advice on DomainSherpa. Please consult an attorney before you get into trouble and it’s too late. If you can’t afford an attorney, then I suggest you don’t invest in anything related to trademark domain names.

      In my opinion, registration of domain names including known trademarks together with additional words may or may not be challengeable under the UDRP and ACPA. It depends on the registrant’s intent — do you have bad faith to profit from a company or person’s trademark? If you’re in the business of selling domain names then may be likely a panel or judge will see it that way.

      The one exception is fair use. Consult an attorney.

      Your second question is the same as your first.

      From what I understand (again, I’m not an attorney), book and movie titles are not entitled to trademark protection, however, the use of a title for merchandising does create trademark rights.

      A complainant doesn’t have to be right to send you a cease & desist letter or file a lawsuit against you, both of which options are openly available to them. If this type of activity seems like a waste of your time and resources, then I suggest you look at other opportunities for domain name registration. There are plenty of them.

      Best of luck to you,
      Michael

  37. Surya says:

    I think USA Government and other countries also have to improve rules about which world can be accepted as a trademark name. For example hotels, aviation, wolf, absinthe, how that names can be accepted as trademark names only by paying cheap cost? For example absinthe, it is a product found by Dr. Pierre Ordinaire in 1792 as a alcoholic beverage, and used first in art by Edgar Degas in L’absinthe (1876). Even Switzerland court stated it can’t be a protected product for Switzerland producers because many countries have produce it for more than 200 years, and even it produce first time in Couvet. But guest what, USA trademark regulator has fill absinthe as a trademark name for some USA companies very easily, with cheap cost and without seeing the background of this product, and indeed without honor to the inventor’s family and Switzerland’s producers as real absinthe’ tradition owner. I think if there are trademarks in Absinthe, only Dr. Piere Ordinairy or Edgar Degas, or Pernod Fill deserve to have trademarks on it.

  38. Middy says:

    Hi There, Thanks for your video that was very informative. Just got a quick question:

    If I have registered few domains which clearly violates TradeMark infringement however I didnt know about legal implications of doing so … How can I get rid of the domains now and what shall i do next to not get involved in legal dispute? Guess I would just like to get my money back for registering those domains. Would be grateful for your advise.

    Many Thanks

    1. Hi Middy,

      Great question. Yes, two domain name registrars (that we know of) allow you to do that.

      See our article “How to delete a domain name registration” here:
      http://www.domainsherpa.com/delete-domain-name/

      Best,
      Michael

      1. Middy says:

        Hi Michael

        Thanks for your reply. I think I will incur a charge of transferring the domain back to the registrar; and it doesn’t look that there’s option to delete it; Do you think its wise to send an email to the company whose trademark that is and let them know that i will transfer the domains to them with no financial benefit to me? Also, how likely it is that the company might just go straight to court as opposed to contacting myself before and asking to transfer it to them? And do you think if they would just go to court that it will look at the fact that they haven’t contacted myself prior to filling the complaint. Reasonably thinking it would be unvise for company to just jump straight to court without contacting myself prior to that as I am willing to transfer the domain without any problems onto them.

        Thanks

        1. Middy says:

          and also do they require to first send the letter or something to the domain owner before applying for the court order?

        2. Hi Middy,

          What’s the registrar that you have the domain name registered at?

          Did you contact their support team and ask them how to delete the domain name? Reference the URL I gave you and ask them if there’s an option like that at the registrar, or perhaps there’s an option they can do for you that’s similar?

          All of your other questions related to legal issues, and I think it’s wise for you to hire an attorney to guide you.

          Best regards,
          Michael

          1. Middy says:

            Oki I see … Registar’s name is http://www.123-reg.co.uk/
            I’ve contacted them asking if I can delete domain name and or transfer back to the registrar free of charge. Awaiting for their reply. Thanks for your help.

            1. I suggest you give up your “free of charge” requirement, pay your dues for learning your lesson and be done with it.

              1. Middy says:

                Thanks. I am just amazed how difficult it is to get rid off it; I did a mistake and dint know legal implications of it and now that I realized that its illegal and want to transfer it ‘in good faith’ I cant even do that free of charge. They seem to have loads of laws protecting it but not that many laws governing the registrars so it seems. Registar should be happy to get back the domain free of charge so they would have a chance to sell it again at a later date. There should be legal procedures where first point of contact must be the owner of the registered domain so ppl like me, who will not object the transfer to trademark claim can do so without complications.

                Anyways thanks for your help and Im glad i came across it before things gone too far with it.

  39. Cameron says:

    how to know the word smartphone is not brand??or its a brand??
    for example Samsung may have filled UDDRP for smartphones.com and own information is not disclosed.
    or smartphones.net ,org,mobi,how to know the word smartphone or smartphones on any NEW Gtld is not a brand?or it s a brand?

    1. David Weslow says:

      Cameron – The trademark database at USPTO.gov may be checked for U.S. trademarks. Trademark247.com has a database that includes U.S. trademarks and UDRP records.

      In relation to new gTLDs, “claims notices” should be issued for the first 90 days that each registry is operational providing notice of any identical trademarks that have been recorded with ICANN’s Trademark Clearinghouse.

  40. Isang says:

    Michael,
    I have a great question for you. I registered a domain name in June of 2007. It appears that 1 year later, a company decided to set up a business with a name identical to the one that I registered. They took the hyphenated version of my domain name. In addition, they applied for a Trademark for that name. Unfortunately, I was not aware of this filing. The registration for Trademark was approved in March of 2009, nearly 2 years after I registered my domain name.

    2 years ago, someone began purchasing .NET, .ORG and .INFO of my domain name. I own the .COM. I just did some research today and found all of this information, literally a few minutes ago. Is there a risk that I could lose my domain, even though I owned the name 1 year before the company in question was even started, and nearly 2 years they filed and were approved for the Trademark?

    Would it be in my best interest to put up a random site on that domain? Right now it is a parked page and has been parked since 2007.

    Thanks,
    Isang

    1. I am very interested to hear the reply to this question also. I am in the same situation, except I was trading as a legit business when someone came and trademarked it.

    2. Nilmar says:

      How did it go for you on this? Did you get an answer to this question? I am in the same situation. Should we be afraid of someone trademarking a name of a domain we owned before the trademark was approved/applied? This should not be possible as then we would have seen a lot of cases of people finding any business missing a trademark and register the trademark and then take over their domains etc.

      In my case the business with the same name actually started years before I registered the domain name but they do not have any trademarks registered.

  41. Manoj says:

    Thanks for taking time on this topic, as trademark thing was a lot confusing before.

  42. NEIL says:

    Mr. Weslow, I would want to ask you if possible a general question about trademarks.

    On Trademarkia.com I saw sometimes thousand of trademarks for the same word, with different companies and different Primary Classes.

    Good examples are “advertise”, “advertising”, or even “levis”.

    In this case, why I cannot register “Facebook”, or “Fcbok”, or “Facebok”, and use these domain names to sell online fish, or vegetables, or even bicycles?

    Thank you in advance.
    Kind regards, Neil

    1. DaveZ says:

      While I’m obviously not Mr. Weslow, I might be able to help with your question.

      A reason is that Facebook is well-known to the general populace in the context of social networking. The more famous and/or unique the trademark, such as Facebook, the more likely people will associate anything bearing that mark with the actual source.

      So even if you register Fcbok or Facebok to sell other items, users will likely associate those words with Facebook or think they’re “endorsing” you when actually not.

      Hope that makes sense. Somehow.

      1. David Weslow says:

        Neil – DaveZ’s comment is very helpful.

        Trademark infringement occurs when there is a likelihood of confusion as to affiliation connection, or association. Trademarks that are famous and distinctive are also entitled to protection from “dilution.” http://www.bitlaw.com/source/15usc/1125.html.

  43. Tauseef says:

    Thanks Michael and David for shedding some lights on how a new gTLD registration if not properly done may invite trademark issues. I think registering a new gTLD is little tricky and care must be given b4 owning a name.

  44. Isang says:

    Michael and Dave,
    Thanks for the video. I have a question. Let’s say someone has a copyright on the words “Common Law”. If someone had such a trademark, would that mean that no one would be able to register domains such as commonlawmarriage.com, commonlawunions.com, commonlawdivorce.com, etc.?

    Take the words “Smart Home”. I believe that those words are trademarked. Does that mean that no one is allowed to register smarthomelights.com, smarthomesecurity.com, or smarthomealarms.com, etc.?

    I hand-picked 15 domain names that I really like and before i registered them, I did a brief search and found that the first 2 words of my phrases were trademarked.The words are pretty widely used. My phrase strings have at least 5 words in them. Does this mean that I am not allowed to register those phrases?

    Thanks,
    Isang

    1. David Weslow says:

      Hi Isang – Your question seems to relate to when a designation will be determined to be a “generic” term not entitled to trademark protection. Here is a link to a case addressing the multi-step “genericness” analysis: http://openjurist.org/782/f2d/987/marvin-ginn-corporation-v-international-association-of-fire-chiefs-inc.

  45. Dan says:

    Hi

    Thanx for a great interview and a much needed topic to cover. I have been frustrated about trademarks and my lack of understanding despite doing some reading on this topic.

    I registered SourceforAdults.com I didn’t realize that adam & eve has a TM on

    Adam & Eve
    Americas most trusted Source For Adult products

    Now is my domain a total infringement or will it depend on what I use the site for? And if so
    the adult entertainment field is off limits?

    thanx in advance for any insight.

    Dan

    1. Hi Dan,

      It sounds like you may be asking for specific legal advice, so you may want to reach out to David privately. He is reachable at DavidWeslow.com.

      Best,
      Michael

  46. Emily says:

    Hi just wondering if any insurance company offer accidental trademark infringement for domain flipping businesses. What are people’s opinion should domain flipping activity need insurance or is it not necessary?

    1. Great question, Emily. I’ll work to find an answer if no one posts one here.

      1. Max says:

        Auto included under UK/Australian based policies.

        Below is a typical IT Policy schedule – this is combined public liability and professional indemnity. Clearly shows IP Issues covered (including trademark).

        Standard professional indemnity policies also do cover – any acts, errors or omissions basically and the defence costs thereof.

        IT policy:
        Trade Practices & Fair Trading
        Claim Investigation Costs
        Disciplinary Proceedings or Enquiries
        Worldwide Territorial Cover
        Automatic Reinstatement of Sum Insured
        Defamation
        Loss of Documents
        Fraud and Dishonesty of Employees
        Infringement of Intellectual Property *****
        Joint Venture Liabilities
        Cover for Employees
        Principals’ Previous Business
        Prior Incorporated Body
        Mergers & Acquisitions
        Estates & Legal Representatives
        Property in Care, Custody & Control

        Im not in the US, but looked around a bit, and they all look very very similar. (most western world insurances are similar/also remembering that all major insurers are multinational/across countries.).

        I would be completely shocked/a total rort, if a good and proper US based IT/Prof Indemnity policy did not include coverage. Its very stock standard and of pretty much zero concern to an insurer in most IT/PI policy’s – the amount of trademark issues (hardly any), and generally capped at $100k or so (a very small amount/considering they are mostly settled very early)….means they all tend to include as standard inclusion.

        (im an insurance broker…obviously!)

        1. Emily says:

          Hi Max,

          Thanks for that

          Can you recommend any policies/insurance companies that will cover worldwide coverage as most policies in Australia will cover me worldwide but exclude US and Canada? How do you get coverage for those countries as well?

          Thanks

  47. Neil says:

    Mr. Weslow,
    I would want to ask you please another question about domains.
    I have registered some domains.
    I have parked them, then I realised from the parking reports, that my precious domains are FAILLISTED.
    Why?
    How we can clean the “Criminal Record” of our domains?
    No rules for that?
    How we can avoid the “Faillisting” menace, which in fact is killing our small business attempt, even before starting it?
    How we can clear the “Faillisted” stamp?
    There is a Google Court for that?
    There is a term for a domain to be faillisted, and then cleared out?
    These domain names are “convicted” forever?
    The are any laws for that?
    Who is enforcing them? Google?
    Thank You for your time and help.
    Kind regards, Neil

    1. Hi Neil,

      Those are some very detailed questions that will likely take a while to answer and may not best answered in comment form.

      I suggest you reach out to an attorney that specializes in IP and domain name law. If you’d like to reach out to David, you can do so via DavidWeslow.com.

      Best,
      Michael

      1. Neil says:

        Thank You, Michael.
        Thank You, Mr. Weslow. I think http://www.westlaw.com “stole” your name.
        Best regards, Neil

  48. Kassey says:

    While domain names and UDRP ruling are global in nature, I understand trademark registration is not. Each country runs its own trademark registration and keeps its own TM database. If this is really the case, a name not found in USPTO database may be registered somewhere in the world, say Vietnam. So, how do you have the peace of mind if you have only checked the USPTO database? On the other hand, taking your DomainSherpa as an example, since it contains two words which look like generic in nature, if the owner of DomainSherpa.in used it to develop a website offering advice on domain investment in India, would that be still a problem?

    1. Surya G K says:

      I agree with you, I think Trademark issue is rather confusing, It is owners’ protections, but also can be a way to monopoly a field of business. For example when I want to buy available domains with the word related to Flights, I found almost all good names have been registered by other peoples. Sure as a beginner, I want to buy a cheap, but good names for my blogs and I almost buy a drop catching in Go Daddy for cheap : aviation.co (or in other extension, I don’t remember the extension). I like it because I have worked in an aviation company before , and it is one word, but aviation is a trademark word, that’s why it was dropped and cheap. It is crazy, isn’t it? How the owner of the trademark can think that only him can use the word aviation? Aviation can’t be a brand, it is a general business for millions of people along the world. And also a hobby for a lot of people too… I think accepting a Trademark in word Aviation is really a fatal mistake for Trademark Regulator..

    2. Neil says:

      Kassey,
      Michael Cyger has invented DomainSherpa.com There are no sherpas for domains.
      It is no “air”, or “bicycle”, or”water”, or “fitness”, or “bodybuilding”, or “flower”, or “flowers”, or “cruise” – all these words were taken from Wikipedia.org, easy and without any effort. Just $300…too easy and too unfair for the competition. This is capitalism, oportunism and competition?
      It is Michael’s merits to exclusively have DomainSherpa.com, I think. He should add TM to his domain name.
      Anyway, the scoundrel DomainSherpa.in cannot be ever never as good and professional as Michael.
      Kind regards, Neil

      1. Surya G K says:

        Surely Niel and Kassey, DomainSherpa.in is registered in Bad faith. Domain Sherpa is not a common used phrase before Michael promote it. It is surely a brand created by Michael Cyger, same with Google, Verizon, or Hotel Combined. No other websites or products refer to Domain Sherpa except this product. And I never hear someone talking about Domain Sherpas before. Even I really guest what Domain Sherpa means at the first time I saw it featured at a Domaining Newsletter..

        1. Neil says:

          Thank You, Surya.
          I also have another good name for Michael’s sucessful and helpful site:
          http://www.HighestCamp.com
          This is exactly what he is doing, bringing everybody to the highes places of Domaining Success; the highest camp just before climbing Everest…”dying” or finding fame and success.
          Thank You, Micheal, for helping us.
          Kind regards, Neil

  49. Neil says:

    Thank you, Michael, for the great interview.

    Mr. Weslow, I would want to ask you please for your professional advise:

    The owner of hotel.com has TM for the very common word “hotel”. Class: Hotels, Motels, Hostels, booking hotels, flights, renting cars.

    iHotel.com is a Trademark-infringing?
    ehotel.com is a Trademerk-infringing?
    hotels.com is a Trademark-infringing?
    vhotel.com isa TM-infringing?

    If yes, it very frustrating. For just $300, anybody can kill the competition on Internet. Too easy.

    http://www.uspto.gov/trademarks/‎ should not kill the small businesses, granting so easy TMs for very common, dictionary words.

    “Water” has TM; “advertise” has TM; “advertising” has TM; “bestseller” has TM, and so have million of very common words.

    This is not fair at all.

    Just $300…

    The big companies should “make” their name, then SEO them, then TM them, like Verizon and many others.

    Please advise. Thank you for your time and . Kind regards, Neil

    1. albert says:

      @Neil
      Basically, trademarks can be challenged even after being granted by the USPTO.

      Jewelry Exchange had a trademark with the USPTO. I believe they went after the people who had http://www.TheJewelryExchange.com.
      http://www.TheJewelryExchange.com in turn challenged owned owned a jewelry plaza. So to return the favor, they chalanged The Jewelry Exchange Trademark saying it basically was not fair as it was not allowing them to describe their business (a jewelry plaza where many jewelers work under one room) Hence-The Jewelry Exchange.
      They backed off once the threat of losing the domain was gone.

      They need to be very coined to make it difficult to challenge.

      One of the best examples I can give is:
      Kodak (Remember them or am I just dating myself.)
      Kodak did not mean anything until they took them name into the camera, picture, etc. industry.

      Another example is Greyhound Bus Lines.
      Greyhound Bus Lines does not have a right to greyhound.com
      But put in travel with the domain, they you are basically screwed.

      Also, the courts have basically ruled that a name taken out of the dictionary basically cannot be exclusive trademarked. I believe that was the case where a former playboy model was sued by playboy and the judge ruled that since it was a common dictionary word, it could not be exclusive used.

      Of course, I am not an attorney and David will of course know more then me.

      Basically, a lot of this depends on who has the most money.

      Look at the way Costco is trying to challenge Tiffany’s trade mark on the Tiffany Ring.

      1. Neil says:

        Albert,

        Thank You for your answer.
        You made my day.
        Kind regards,
        Neil

    2. David Weslow says:

      Neil – I suggest reviewing the records of the U.S. Patent and Trademark Office for any trademarks of potential concern to determine whether a “disclaimer” has been filed for the wording that is believed to be generic. A trademark registration may be challenged on grounds of “genericness,” but it is important to keep in mind that the genericness assessment relates to the specific products or services on which the trademark is used or registered.

      1. Neil says:

        David,

        Thank You for your time and help.
        That is why I like so much DomainSherpa.com
        I would want in the future to ask you for assistance in selling some of my domains.
        Kind regards, Neil

  50. jjsaul says:

    There’s such a thing as being too timid about trademarks as well.

    I am an amateur astronomer, and registered astro.equipment for use in reviewing/discussing astronomy gear – telescopes, tripods, eyepieces, etc.

    There’s nothing more generic than “astro” for astronomy subjects, right?

    When the trademark notice popped up, it suddenly hit me. Oh shit! I realized that the Houston Astros must have tagged the mark for baseball gear and clothing. Even though they could not legitimately extend the mark in those fields to cover the field of astronomy where it is indisputable generic, I certainly wouldn’t bother trying to match resources with them.

    Luckily, I didn’t just assume that was the case, I read the notice. Then I went to the USPTO database. I’m fortunate in that I specialized in intellectual property in law school a lifetime and several careers ago.

    It was not the baseball team. Their mark is “Astros” – only with the final “s”, never without it. The notice was from a British company in a completely unrelated field, and I am confident that I’m not treading on anyone’s IP toes in using “Astro.Equipment” for the obvious generic use in the field of astronomy equipment.

    1. David Weslow says:

      JJSaul – You make a good point. The trademark claims notice that is required by ICANN for the first 90 days of general registration for new gTLDs does not necessarily mean that registration or use of the domain name in question would not be lawful. However, it is appropriate to conduct due diligence after receiving a trademark claims notice and before proceeding to register the domain name.

  51. Terry says:

    It’s shameful that someone registered domainsherpa.in. Good for you for calling him out. This kind of practice is what gives all investors a “black eye” and it should not be tolerated any longer.

    Shame on you K Rajagopanan of Chennai, India.

  52. albert says:

    Forgot to clarify that the U.S. Patent Office did not allow them to have the rights to the two word names alone.
    Thanks again in advance for any input.

    Mike, also can’t wait for Thursday.
    Thanks for all that you do.

  53. albert says:

    Once again, great interview.
    Thanks for for your interview David.
    I currently have two domains where one is the singular in a generic form and the other is a singular in the industry that I am actually in. Both are .Coms
    Both company’s use the plural domains in the same industry.
    Having said all this, both companies tried to trademark the two wards.
    Both were denied the two word trade mark.
    One dropped their attempt to continue.
    The other added the city that they are in and then was able to trademark the name.
    Example:
    abc of New York rather then abc.
    I too have about 100 other generic domains in the field (jewelry).
    I know they can always come after me, however, what are their chances of winning?

    P.S.-I have been sued before on another generic term and won that U.D.R.P. case (this was about 12 years ago.)

    Thanks in advance for any input

    1. David Weslow says:

      Albert – It is possible that the registrations are registered on the “Supplemental Register” of the U.S. Patent and Trademark Office, which confers no substantive rights. The “genericness” standard under U.S. law (15 U.S.C. 1064(3)) relates to the specific products or services on which the trademark is registered. A trademark cannot properly be considered generic without consideration of the relevant products or services.

      1. albert says:

        Thanks for your reply.

  54. brand says:

    Thanks for another great show.

    1. Thanks, Brand. I appreciate you watching and commenting.

  55. Neil says:

    what about trademark names mixed with other words, or is it purely the trademark word /s alone?

    1. If the intent is to register it in bad faith with intent to profit from a company’s trademark, then it doesn’t matter how many words are included in the domain name.

      1. NEIL says:

        Michael,

        I am different “Neil”, than the one below.

        Can I register “Yaho.com”, and sell online books, or DVDs? This is not bad faith.

        My Yaho.com has a different Primary Class than Yahoo.com.

        I bet that Yahoo will send me a notice right away asking me to stop using MY “Yaho.com”, saying that Yahoo.com cannot endorse my books…

        Am I right?

        In this case, only some of “privileged” ($$$) owners of trademarks can claim/forbid any combination of their $300 value trademarked names?

        Thank you in advance.
        Kind regards, Neil

  56. Surya G K says:

    Thank you David and Michael, this is a very important show… Thank you for the info about Trademark247.com. Before this I only depend on Estibot to check if a word is a trademark or not. I got one that it is not said as Trademark with Estibot, but it is found filled in Trademark247.com

    1. Good point. If you’re trying to protect yourself, you should do an exhaustive search.

  57. Vipin Kumar says:

    Great show, thank you for valuable info.

    1. Thanks for watching and taking a moment to comment, Vipin.

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