Can a trademark be implied?

[mczarnek]

Hello,

I registered a couple of domain names and now realize they are trademarked.. I'm canceling those ones but I'm wondering about the ones where a company has not trademarked their name. Is there an implied trademark preventing me from legally registering those domains? What if the company later applies for a trademark, can it be applied to domain names that were registered before the date it was trademarked?

Thank you,
Matt

 

[STEPHAN]

What state? (Just making sure you are in the US.)

There is other rights than trademarks like name rights.

 

[quincy]

Hello,

I registered a couple of domain names and now realize they are trademarked.. I'm canceling those ones but I'm wondering about the ones where a company has not trademarked their name. Is there an implied trademark preventing me from legally registering those domains? What if the company later applies for a trademark, can it be applied to domain names that were registered before the date it was trademarked?

Thank you,
Matt

STEPHAN is correct that we need your state/country name. Trademark laws vary from country to country (although international arbitration rules for domain names exist).

That said, there are many domain names that contain trademarks not owned by the domain name holder and this does not always mean the domain name holder must give up the domain name. In fact, it usually doesn't mean that.

A domain name may need to be given up to the trademark holder or the use of the domain name stopped, however, if the trademark is a famous one and the use of the trademark in a domain name confuses consumers into thinking the holder of the domain name is connected with the holder of the trademark. Or a domain name may have to be given up or the use of the domain name stopped if the use of the trademark in the domain name dilutes the value of the famous trademark (perhaps by directing consumers to a site of questionable taste, which would reflect poorly on the product or service identified by the trademark).

A domain name on its own does not give the domain name holder any trademark rights, in other words, although a trademark owner could have rights to a domain name just by the nature of their rights in their trademark.

And some names in domain names are protected from use by others because the domain name itself functions as a trademark (like Amazon.com does with its online sales).

If you search out the word "entrepreneur" online, for one example, you will find a lot of domain names that have that word as part of their domain name - although "Entrepreneur" is, in fact, a company trademark. Because there has been no consumer confusion generated by the many uses of "entrepreneur" and because it is a common word that can be used by anyone, there is not an issue with the word being used in multiple domain names.

If you purposely choose to purchase domain names that have famous trademarks in them, though, you can have these names wrested away. You cannot "squat" on domain names - buying them with the hope of selling them to the trademark holders for a high price. That is called cybersquatting and that is a definite no no.

 

[mczarnek]

Yes, I am in the US in Virginia.

Thank you. That all makes sense, I have read about cybersquatting and that is basically what I'm trying to do.

However, I'm interested in a few domain names that are available for medium/small companies that Ithink have long term potential but those companies have not officially trademarked their names. Any legal issues?

Thanks again!

 

[STEPHAN]

They do not have to have a trademark.

Come on, you are only buying them because of their name and to sell them to them later? This is not how the domain business works.

 

[single317dad]

This is not how the domain business works.

Prior to 1999, mczarnek's plan was actually quite commonly executed. Dennis Toeppen famously held domains ransom for $13,000 each until Panavision shot him down in court. Many a worm crawled along the bed of the internet and hoped to hit the domain lottery. Since then, several laws have been enacted or modified to limit this activity (though one could argue - and has successfully - that the necessary protections existed prior to ACPA).

You're right, though, in your assertion that this is, indeed, no longer how the domain business works. Buying up domains and holding them for ransom is a costly endeavor nowadays; such names as Julia Roberts, Sting, BBC, Dell, and Verizon have made sure of that.

 

[mczarnek]

Understandable but that's a shame... What if my plan was to give the users useful information on that organisation?

There is one other way I could make money off of these.. Though granted, more work is needed. But it would actually probably make more money in the long run since it'd be a legitimate business.

For example, let's say I bought Petco.cats and Petco.dogs and provided users who visited these sites a long list of all the cats and dogs available for purchase. Maybe even used a Petco affiliate program or something.

In that example, would it matter if Petco was trademarked?

Note these non-trademarked entries are not legally companies either.

Thanks guys, I'm appreciating all this knowledge.

 

[quincy]

Understandable but that's a shame... What if my plan was to give the users useful information on that organisation?

There is one other way I could make money off of these.. Though granted, more work is needed. But it would actually probably make more money in the long run since it'd be a legitimate business.

For example, let's say I bought Petco.cats and Petco.dogs and provided users who visited these sites a long list of all the cats and dogs available for purchase. Maybe even used a Petco affiliate program or something.

In that example, would it matter if Petco was trademarked?

Note these non-trademarked entries are not legally companies either.

Thanks guys, I'm appreciating all this knowledge.

First, there is no "official" trademark for a company. If they are using a name to identify their business, product or service, that is their trademark. A trademark does not have to be registered to provide the trademark holder with rights.

Your Petco plan would be using Petco's trademark for your own purposes, and that can (probably would) lose you your domain name and possibly get you sued in the process - unless Petco "partners" with you in advance to offer this service to the public.

Your best bet is to avoid domain names with famous trademarks in them without permission (sponsorship, endorsement, license) from the trademark holder. You should not buy domain names with the thought of capitalizing off the trademark holder.

 

[STEPHAN]

let's say I bought Petco.cats and Petco.dogs

If you are thinking about registering new TLDs with brand names - forget about it.

a) they have zero traffic
b) with about 1900 new TLDs coming brands have stopped buying these from cybersquatters. They rather send lawyers.


(I am in domains since 1998 and have a few thousand and a company in that field, so I know what I am talking about.)

 

[quincy]

If you are thinking about registering new TLDs with brand names - forget about it.

a) they have zero traffic
b) with about 1900 new TLDs coming brands have stopped buying these from cybersquatters. They rather send lawyers.


(I am in domains since 1998 and have a few thousand and a company in that field, so I know what I am talking about.)

One reason people purchase domain names that contain trademarks is FOR the traffic generated by a well-known name. That is why cybersquatters purchased the names originally - to sell them back to the trademark holder for an inflated price.

"Typo" squatting is a variation on this theme, where domain names will be purchased that use the trademark but with a slight difference in the spelling.

These same or similar domain names attract consumers by misleading the consumer into thinking they are heading to the trademark holder's site. See Lands' End, Inc, v. Remy, 477 F.Supp. 2d 941 (W.D. Wis., September 1, 2006).

Refer to the Anticybersquatting Consumer Protection Act.

Registering a domain name in bad faith is a good way to get yourself into legal hot water. It is not recommended.

 

[mczarnek]

Appreciate the advice, what if I legitimately want to create a business and use that domain name?

I can't say too much as I haven't registered the domain name yet.

If so would it be illegal to buy it, give the other organization the option to buy it off of me. But if they aren't interested create a business on it? If they aren't interested, I legitimately would like to create a business on it.

 

[quincy]

Appreciate the advice, what if I legitimately want to create a business and use that domain name?

I can't say too much as I haven't registered the domain name yet.

If so would it be illegal to buy it, give the other organization the option to buy it off of me. But if they aren't interested create a business on it? If they aren't interested, I legitimately would like to create a business on it.

If you purchase a domain name that contains an existing trademark and use this name to generate revenue in a pay-per-click type scheme before you have established a business presence on the site that, too, can get you sued (see Webadvisor v. Bank of America Corp., S.D.N.Y., No. 09-cv-05769-DC, February 16, 2009).

You appear to want to make money by trading off the rights of others. Don't do this. It is not smart. It can get you sued.

If you have a legitimate business and your business has a name to identify itself that does not infringe on the rights of others, you can pick a domain name that reflects this legitimate business of yours. Then develop your business and make money from it. That is the best way to stay on the right side of the law.

Good luck.

 

[STEPHAN]

If they aren't interested, I legitimately would like to create a business on it.

The fact that they are not interested in buying it, does not mean that you can use it.

 

[quincy]

If you are purchasing a domain name with the purpose of selling it to the trademark holder, that is considered a bad faith purchase. And the trademark holder may not actually have to buy it. The domain name can be turned over to the trademark holder.

Seriously, Matt, you need to rethink your plans.

 

[mczarnek]

Ok.. Well I will buy one or two of them as I'm directly involved with those organizations but I guess I'll ditch the rest :/

Thanks guys.