Domain names and trademarks
- Thread starter xploit
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VREpub
New Member
You can't use a TM in your domain or even in a subdomain or URL. It's called TM infringement. Sure, you might get away with it, but you are still infringing on a TM. It's not worth using a TM in a domain that you are going to develop because if you get caught not only could it end up costing you money, but you have to get a whole new domain and start over. It's just not worth it.
I've seen quite a few offers that do not allow trademark use in any way, shape or form. You need to know what's allowed.
Generally speaking though, you want to be careful about infringing on someone's TM, especially if it's a big corporate name. As @VREpub mentioned, you could get in trouble. However, I'm guessing (I'm not lawyer, don't even play one on TV) that they would issue a Cease and Desist letter first.
Generally speaking though, you want to be careful about infringing on someone's TM, especially if it's a big corporate name. As @VREpub mentioned, you could get in trouble. However, I'm guessing (I'm not lawyer, don't even play one on TV) that they would issue a Cease and Desist letter first.
Graybeard
Well-Known Member
that's a bit harsh --
Also, you cannot win a UDRP in the basis of a complaint of a sub-domain name or a URL AFIK
Domains are cheap to buy and if you are using someone's trademark in fair use for a review type site you are not attempting to brand your domain you are attempting to monetize it.
- reasonably assumed to confuse as to the trademark owner is the UDRP policy.
Also, you cannot win a UDRP in the basis of a complaint of a sub-domain name or a URL AFIK
Domains are cheap to buy and if you are using someone's trademark in fair use for a review type site you are not attempting to brand your domain you are attempting to monetize it.
VREpub
New Member
Back in the older days of the internet, I wasn't very "up to snuff" to TM infringement. I regged a domain with a famous prescription drug name in it. Almost a year later, I received a certified letter from the company who makes that drug telling me that I had 72 hours from the receipt of the letter to...
1. Drop the domain and any other domains I might own with that TM.
2. Remove the trademarked name from any subdomains and subfolders i may have on that domain or any other domain/website I own.
3. Fax them a signed affidavit (which they provided) stating that I did the above and will refrain from using their TM in any way in the future.
...or litigation would commence.
I know about "fair use". It don't mean squat. If you are using a TM in the bounds of fair use, but the company has deep pockets and wants you to stop, they will sue you. they may lose in court, but you also lose in terms of time and money.
And as far as using TMs in a subdomain or subfolder, yes, I know that this has nothing to do with UDRP, I never said it did. It's still risky to use a TM on your own digital assets because you can still be sued. Also, the TM owner can complain to your web host and this could lead to your hosting account getting suspended. Sure, most hosts will probably alert you and give you X days to remove the TM infringements from your assets, but some will just can your a$$.
Companies use courts to make you spend money and ruin you financially even if they don't have a case. A classic example of this is nissan.com. The owner of nissan.com, Uzi Nissan, had (has?) a computer repair business and registered nissan.com for his business. Nissan sued him many times and it cost him millions. But he stood his ground because not only is it his last name, but Nissan is not in the PC repair business. When you own a TM, you have to specify your use of that TM and what industry you are TMing it for. A name can be trademark by multiple businesses so long as they are for different industries/uses. Technically, Nissan had no rights to that domain, but they keep trying. Their goal obviously was to put him in the poorhouse and then swoop in and get a free domain. I think they are done with courts for now, but the site states that Nissan wants to add the computer business to their TM so that they can then legally take the domain from him. If successful, this would lead to more litigation, no doubt, but Uzi Nissan apparently has no intention of giving up.
The last entry about this matter on the domain is 2008. You can go to his site and click on t link to the updates.
A quote from Uzi on an article that sums up my point about these monsters and their goals....
I stand by my original recommendation...It's just not worth it.
1. Drop the domain and any other domains I might own with that TM.
2. Remove the trademarked name from any subdomains and subfolders i may have on that domain or any other domain/website I own.
3. Fax them a signed affidavit (which they provided) stating that I did the above and will refrain from using their TM in any way in the future.
...or litigation would commence.
I know about "fair use". It don't mean squat. If you are using a TM in the bounds of fair use, but the company has deep pockets and wants you to stop, they will sue you. they may lose in court, but you also lose in terms of time and money.
And as far as using TMs in a subdomain or subfolder, yes, I know that this has nothing to do with UDRP, I never said it did. It's still risky to use a TM on your own digital assets because you can still be sued. Also, the TM owner can complain to your web host and this could lead to your hosting account getting suspended. Sure, most hosts will probably alert you and give you X days to remove the TM infringements from your assets, but some will just can your a$$.
Companies use courts to make you spend money and ruin you financially even if they don't have a case. A classic example of this is nissan.com. The owner of nissan.com, Uzi Nissan, had (has?) a computer repair business and registered nissan.com for his business. Nissan sued him many times and it cost him millions. But he stood his ground because not only is it his last name, but Nissan is not in the PC repair business. When you own a TM, you have to specify your use of that TM and what industry you are TMing it for. A name can be trademark by multiple businesses so long as they are for different industries/uses. Technically, Nissan had no rights to that domain, but they keep trying. Their goal obviously was to put him in the poorhouse and then swoop in and get a free domain. I think they are done with courts for now, but the site states that Nissan wants to add the computer business to their TM so that they can then legally take the domain from him. If successful, this would lead to more litigation, no doubt, but Uzi Nissan apparently has no intention of giving up.
The last entry about this matter on the domain is 2008. You can go to his site and click on t link to the updates.
A quote from Uzi on an article that sums up my point about these monsters and their goals....
I stand by my original recommendation...It's just not worth it.
I recommend using a tool like this: Alternative Spelling Finder
One still needs to be cautious, a misspelled version may still be considered an infringement if the legal team can out spend you. However, I can call my company Dig or Digger, instead of Digg or Flicker instead of Flickr, and maybe Red It instead of Reddit, mostly because these are common vocabulary words. These may pass the sniff test especially if they are not in the same business.
A friend of mine was sued by Realtor.org many years ago. He was, and is, a scientist. He created a site called Real Tor Science. The domains were realtorscience.com and .org. He won his case and was afforded a compensation for legal fees and discomfort as a defendant in the case by a federal judge who called Realtor.org's suit the epitome of frivolous.
One still needs to be cautious, a misspelled version may still be considered an infringement if the legal team can out spend you. However, I can call my company Dig or Digger, instead of Digg or Flicker instead of Flickr, and maybe Red It instead of Reddit, mostly because these are common vocabulary words. These may pass the sniff test especially if they are not in the same business.
A friend of mine was sued by Realtor.org many years ago. He was, and is, a scientist. He created a site called Real Tor Science. The domains were realtorscience.com and .org. He won his case and was afforded a compensation for legal fees and discomfort as a defendant in the case by a federal judge who called Realtor.org's suit the epitome of frivolous.
Graybeard
Well-Known Member
No balls no glory
However,
I wonder why he got sued
Amazon.com: Watch The Patent Scam | Prime Video
I have had to deal with this -- this is absolutely true-- the Long -Arm jurisdiction in the Federal Courts of Eastern Texas
You can always do business using your legal name -- However, if my legal name was Apple Jones and I started a computer store using my legal name what do you think would happen
Let's argue about using a trademark name in parody next
BTW: I wrote a legal *Affiliate Agreement* specifically disallowing use of our trademark names in any affiliate 1st level (parent) domain or sub-domain name but *explicitly* allowing the use of our trademarks in URI/URL paths in the file names -- Why? You would be an idiot to not want the free publicity and branding.
However,
I wonder why he got sued
Amazon.com: Watch The Patent Scam | Prime Video
I have had to deal with this -- this is absolutely true-- the Long -Arm jurisdiction in the Federal Courts of Eastern Texas
You can always do business using your legal name -- However, if my legal name was Apple Jones and I started a computer store using my legal name what do you think would happen
Let's argue about using a trademark name in parody next
BTW: I wrote a legal *Affiliate Agreement* specifically disallowing use of our trademark names in any affiliate 1st level (parent) domain or sub-domain name but *explicitly* allowing the use of our trademarks in URI/URL paths in the file names -- Why? You would be an idiot to not want the free publicity and branding.
VREpub
New Member
Hey @T J Tutor,
Can you point me somewhere to prove this? I don't actual disbelieve you. You see, I mentioned this on another forum (as fact) and there is an attorney there, a real smug bast@rd, who is on my ass claiming I'm making up lies just to get post counts lol.
I can't find anything on Google & WIPO or searching UDRPs from National Association of Realtors. Also realtorscience.org was never registered before
Anyway, if you could point to to some proof, I'd appreciate that.
The Realtorscience username on Twitter is being used by a realtor now.
Realtorscience.com was around in 2007, according to the Wayback Machine. The early years weren't archived to see what the site was used for back then.
Realtorscience.com was around in 2007, according to the Wayback Machine. The early years weren't archived to see what the site was used for back then.
Graybeard
Well-Known Member
- UDRP/URS with regard to domain name arbitration
- Trademark/(or copyright) Laws with regard to Courts
- Contract Law with regard to Affiliate Contracts (unilateral decisions and legal rights)
An affiliate contract can say anything the issuer wants to say wither lawful or not -- WTF?
If the decision is unilateral it stands unless challenged; in the court of competent jurisdiction; and within the contract's statue of limitations under that jurisdiction's laws (<Period>). **(omitted take it to the public, take it to the streets or some other *unnamed* action
)Your rights are meaningless unless you are willing to do battle.
VREpub
New Member
Yah I know. Wayback isn't reliable in this case. Not to mention you used to be able to block Wayback Machine up until 2017.
And whois info isn't either since the "created" date is the date the domain last changed hands. So if it was registered before the date it says by another person, then you have to pay for that information.
But there's one thing for sure, the .ORG was never registered.
And whois info isn't either since the "created" date is the date the domain last changed hands. So if it was registered before the date it says by another person, then you have to pay for that information.
But there's one thing for sure, the .ORG was never registered.
I am not getting involved in some petty disagreement. My friend will remain anonymous and won't bother him to get the details of his long ago case. That's just silly. He is a professor of geology and was caught up in a silly case.
I simply thought sharing the story may help shine some light on this discussion. The case is irrelevant, the results are what matters. If the professor had been a Realtor, then the case may have been valid, but he was not a Realtor and was using the domain for the purposes of science unrelated to Realty. THAT IS THE LESSON!
TOR: Per Wiki
"A tor, which is also known by geomorphologists as either a castle koppie or kopje, is a large, free-standing rock outcrop that rises abruptly from the surrounding smooth and gentle slopes of a rounded hill summit or ridge crest."
Graybeard
Well-Known Member
Not - authoritative but makes sense:
Domain name "registered on" date>>>
First of all, it's important to note that there is no standard in how the registries stores or expose the information.
Let's say A registers the domain on Jan 2006. On Mar 2010 the domain is transferred to B. The registration date will still be Jan 2006.
The registration date will not change if the domain keeps being renewed, it is transferred to another owner or to another registrar.
However, there is also a second scenario: the domain is registered on Jan 2006, then at some point the domain is not renewed and it expires (let's say on Dec 2010). On May 2011 the domain is then re-registered (it doesn't really matter by whom). At this point, the registration date will be May 2011.
In other words, the registration date reflects the latest registration, it doesn't reflect the date the domain was registered the first time (if it was registered and then expired). <<< /end quote
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Domain name "registered on" date>>>
First of all, it's important to note that there is no standard in how the registries stores or expose the information.
Most ICANN-regulated TLDs follow the same rules, but generally speaking each registry can store and manipulate most of the registration information independently than other registries.
That said, the "registered on" generally represents the initial registration of a domain name, regardless the ownership.
[**emphasis added]
That said, the "registered on" generally represents the initial registration of a domain name, regardless the ownership.
[**emphasis added]
Let's say A registers the domain on Jan 2006. On Mar 2010 the domain is transferred to B. The registration date will still be Jan 2006.
The registration date will not change if the domain keeps being renewed, it is transferred to another owner or to another registrar.
However, there is also a second scenario: the domain is registered on Jan 2006, then at some point the domain is not renewed and it expires (let's say on Dec 2010). On May 2011 the domain is then re-registered (it doesn't really matter by whom). At this point, the registration date will be May 2011.
In other words, the registration date reflects the latest registration, it doesn't reflect the date the domain was registered the first time (if it was registered and then expired). <<< /end quote
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- I do know for fact that preexisting registration rights extinguish when the ownership changes of a domain being let by an ICANN 'registry' per UDRP arbitration rulings (precedent).
- If you held personal property rights in a domain prior to the common use in commerce and/or filing (and not only granting) of a trademark by a complainant in a UDRP arbitration you have a bona fide right of use. However, your use must be in good faith also.
Graybeard
Well-Known Member
If you have established a common law trademark in an unrelated use to the complainant/plaintiff's asserted and alleged trademark infringement -- again you have bona fide rights when there is use in good faith proven.
The are many examples of trademarks approved and registered using common words together.
That is exactly what happened there^^
A smart move is to check for trademark registration prior to registering a domain name -- if it is successful YOU may want to trademark the domain name.
