|How Do You Analyze or Deal With Domain Trademark Issues?|
General discussion about domains and trademarks
Here's the scenario. The client came up with their business name years ago. It is a very unique name that was developed by taking one of their primary keywords and adding a letter in front. It is really one of those "killer" niche domains.
Unfortunately the .com version of the name was already taken at the time the business was established so the .net version was chosen. I should preface this by saying that the client is not knowledgeable in this area so they really didn't understand the challenges of promoting a .net TLD. The client have made a few attempts over the years to inquire about purchasing the .com from the original Registrant but they are not interested in selling. The domain has been parked since 1999.
Now, in speaking with the client, I've come to find out that they applied for and were awarded a Service Mark on the name itself (it does not include the .net). The name is so unique, that there are only two references to it within TESS and the second one has been DEAD for some time. The first belongs to my client. They were just awarded the SM in 2007.
Does anyone know how this works? If the name is that unique, and the client now have an SM, does the client have some sort of rightful claim to the .com version since it has been parked and unused for so long? I know, seek legal counsel. That is already in the works. I just wanted to get some feedback from my peers whom I know have some quality input for me. :)
|does the client have some sort of rightful claim to the .com |
You might want to support the proposed Snowe Bill that may help your client but one rather large caveat in its current form may stuff quite a few of your peers here and other small businesses who can not afford to defend the "I want" law suits.
|Alrighty. As explained below and as worked out in an exchange of stickymails sent after this thread appeared, we are going to reframe the issue a bit in hopes of building a general trademark analysis and (unqualified, "don't rely on it", talk to a lawyer no matter how good it is) legal analysis thread. So, here goes. Feel free to join in to whatever degree you have experience, training or deeper insight into the analysis of domain name + trademark issues. |
Parked is not the equivalent of "unused", especially given the advances in "feed technology". Many of the generic domains, that likely would be "developed" as directory type websites, would operate in substantially the same manner as they do now, as "parked domains" They would
- be "developed" as a website mostly driven by a paid inclusion database of domain-topic related websites.
- The charge for websites appearing "as listings" on the "developed" website is the operational equivalent of Google or Yahoo acquiring and building "the list of pay-for-inclusion" websites and providing that list as a feed to the domain-parked-"website".
So, if it - what you see in your browser - walks like a duck (database driven webpages), quacks like a duck (website listings appear on those pages as in any directory fed from a database) and flies/poops like a duck (has the operational equivalent of paying "members") then it's a bit of a strain to say it's not a website. Parked pages, which now also include a smattering of content (news feeds, public domain content, etc) are websites, as much as the great variety of anything else that calls itself a website - such a MFA "websites", product feed "affiliate websites", etc.
So, I'd remove from the analysis the fact that the "domain is parked". Parking is just a form of auto-generated website creation and there are millions of auto-generated "websites" which - in addition to the above - include blogs that are little more than embeded RSS feeds, "websites" that spit back to Google what the websites "system" already pulled from Google, and on and on.
IMHO, salesmark/trademak analysis really needs to move beyond "is it parked"? Parking is irrelevant to "infringement" or "stakes claiming".
Or, maybe not, as even "as parked" the domain-web-site "exists" and therefore - if it pre-exists "your (version of) a website" your client may well be "on notice" of prior "use". That notice may be a fact of some importance in some settings.
The more relevant issues might be:
1. NAF / WIPO, a/k/a "the cheap route". At NAF and WIPO the fact that the domain registration pre-dated your client's service mark will likely be the Achille's heel. Your client likely won't prevail.
2. Prior knowledge. Who had the prior knowledge? My guess is the person who registered what I'm guessing is as Letter(I-,E-) + Word domain had no prior knowledge of your client's company. Therefore, it's your client who likely had prior knowledge of the registration by the .Com registrant. Push comes to shove, if your client chooses to push, it's possible that "with that knowledge of the pre-existing registration and use" your client could lose their rights. Longshot? Maybe. What if the registrant lives in another country and counters your move with legal action in their country - where the rules are a bit different? What if your claim of a salemark is countered with a common law claim? What if the 2 marks may have distinct uses? What if your client failed to disclose knowledge of the existing "use" when applying for a salesmark?
P1R, trademark and salesmark is sufficiently complex and sufficiently nuanced that it really isn't a fruitful "forum topic". In most cases, of late, trademark threads have recently been quickly put to rest. The reason I'm responding to this one - besides the fact that you are by far one of the most helpful members of WebmasterWorld (and a mod, too boot) - is that your question about "parked" and "unused" is one that continues to play a role in the minds of many and I wish to address that issue as a unique issue.
IMHO, the idea that "parking is a factor" - in 2008 - has or is darned near a 'legal distinction anachronism'. I don't believe parking, per se, has ever been an important fact in trademark analysis for if it was the plethora of WIPO and NAF rulings would long ago have established that parking means unused mean and that 'you lose something'.
But that's not the case. Not even close.
Parking isn't at all what the trademark experts - those sitting as adjudicators - have focused on. It has only been an issue where those parking domains were plainly "trading off" the famous or well established - and typically non-generic - "brand". (You can find some reason rulings where 3 letter .Com domains, which are typically immune from "we own those 3 letter" claims of right because there's just so many ways 3 letters can be deployed, have lost their domains because the person parking the 3 letter domain chose to specially target ads relating to the most popular "trademarked and non-generic use" of those 3 letters.)
Okay, that's the parking side of the analysis.
The brand, trademark or salesmark analysis, which tends to be fact specific, complex and nuanced, is really beyond the methods and practical abilities of this space. We really can't help your or your client with a targeted analysis, but perhaps we can flesh this out with a bit more generic advice.
So, P1R, if you've got any other interesting angles on this issue - ones that can keep us in the generic analysis space - I'm game, 'cause I plan to use this thread as an opportunity to build a bit of a generic analysis opportunity . . as time allows. :)
Feed us as much generalized info or questions as you care, P1R, as I know you to be a very smart fella with great writing skills and this could be a good object lesson in generic trademark analysis. In other words, help me out here as trademark is an important issue in this space but, to develop a "generic use thread" requires a certain special touch - which you have, in framing issues, integrating hypotheticals, etc.
IF anyone else has any generic trademark analysis advice to offer now would be a great time to post it up.
[edited by: Webwork at 4:51 pm (utc) on Mar. 12, 2008]
|The client have made a few attempts over the years to inquire about purchasing the .com from the original Registrant but they are not interested in selling. The domain has been parked since 1999. |
We had a name we would have liked to buy several years ago. We would have probably paid up to $5,000 at the time but the PPC firm wasn't interested in selling. Though $5,000 would have seemed a lot of money at the time compared to market values and what the name was worth for our use.
Their site had and still has PPC adverts I doubt their return is anything like that as the term is not really associated with anything commercial.
However not selling to us has been to their advantage as I doubt they would even entertain an offer from us at $50,000 - $60,000 today as that is what the domain would likely achieve in the open market today.
With hindsight I should have initially offered them $10,000 even $20,000 and then maybe we might have owned the domain today and it would still have been a good investment (even without our intended use).
Most people / companies have a price often its worth more to them than it is to the buyer. Talk to them don't try and litigate the name.
Communication is the key not litigation. - That is what you would want them to do to you if the situation was reversed.
Here's a question I have for you, the members of WebmasterWorld:
How do you address concerns about trademarks when deciding whether to register a domain or buy an aftermarket domain?
Do you check registration sources? Which ones?
Do you check Google? For what? Why?
Do you check to see if there are other websites using variants of the domain name?
Do you only avoid "famous marks", such as Sony, Disney, etc.?
What steps do you take? Have you ever consulted with a lawyer?
Have you ever read a WIPO decision or NAF opinion?
What do you consider to be the best layperson's guide to domain trademark law? (Yes, I'm going with allowing folks to provide URLs to somewhat mainstream sources of solid domain trademark law. Not some second rate regurgitation on someone's personal blog.)
Are you oblivious or conscious of trademark issues?
Alrighty, having posed the questions allow me to start the process of responding . .
First of, I steer clear of famous marks. Don't need 'em. Don't want 'em. Too many issues, especially the moment anyone attempts to make coin off the famous mark.
My target domains are always generic descriptive domains, i.e., industry phrases of general meaning that no one agency can fairly claim.
Have I seen some folks or companies attempt to lay claim to trademark rights to truly generic descriptive word domains? Sure, aplenty. Is it overreaching? Absolutely and they better be prepared to file lawsuits against 100s, if not 1000s of websites to "defend their mark" against dilution, infringement, etc.
From time to time I check [USPTO.gov...] to see who is registering - or attempting to register - trademarks on generic descriptive words, phrases, domains. The USPTO database is lettered with "dead" applications for such.
From what I've seen most "trademark trouble" arises from people who deliberately trade off famous marks of others.
NAF and WIPO also demonstrate that some folks get into trouble trading off trademarks that are somewhat less than "famous", i.e. rightfully registered marks that have limited application. For example, a less well known firm or company that offers a specific product or service.
I have a small advantage that most domainers don't in that I have a law degree. So, the 3 times in my "domain career" that I received what I call nastygrams - letters from lawyers - I was able to deal with the issues directly and effectively. One time involved no less than 3 rounds lengthy legal letter exchanges with a major law firm, representing a famous brand, that I believed was overstating its case of claiming exclusive rights to certain words. The sabre rattling ended with a "draw". I wasn't targeting their specific business, which was self-evident, and I retained the domain. Ditto another "big business" that, again, was overstating its control of generic descriptive words.
I'm ready for war, if need be, so threats and bullying - which aren't uncommon in the domain space - aren't a concern. Given the number of domains in my portfolio 3 challenges in 9 years suggest that I must be doing something right.
[edited by: Webwork at 2:01 pm (utc) on Mar. 14, 2008]
I've spent much time with attorneys on this matter over the (especially recent) years. I found a doc saved with some info on this topic and would like to share as this is most relevent to this conversation.
The best alternative to pursuing a domain name dispute through the courts is to take advantage of the domain name dispute policies that have been developed by the organizations that assign domain names. Disputes prior to December of 1999 were handled under the domain name dispute policy created by NSI.
Under this much maligned policy, NSI created a procedure under which a third-party can challenge the right of a domain name owner to use a particular domain name. If the challenge were successful, the domain name would be suspended. This policy only protected parties that had a nationally registered trademark identical to another party's second level domain name (i.e., Microsoft in "www.microsoft.com"). An owner of an unregistered trademark could not initiate an action under this policy, nor could an owner of a trademark that was confusingly similar (but not identical). If the date that the trademark was first registered predated the domain name registration, the domain name owner had to supply their own trademark registration for the second-level domain name. If the domain name owner could not provide such a trademark registration, NSI would suspend all use of the domain name. This is true even if the challenging party could not properly prove a claim of trademark infringement (see the BitLaw discussions on trademark infringement in general and trademark infringement on the Internet for more information).
This policy has now been replaced with a Uniform Domain Name Dispute Resolution Policy created by ICANN and used by all accredited registrars. Under this new policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to prevail, the trademark owner must show:
1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.
If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.
Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:
* use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute;
* that the domain name owner has been commonly known by the second level domain name; or
* that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue
A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including by showing that the domain name owner:
* registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
* engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
* registered the domain name primarily to disrupt the business of a competitor
[edited by: Import_Export at 2:07 am (utc) on Mar. 15, 2008]
|Communication is the key not litigation. - That is what you would want them to do to you if the situation was reversed. |
Amen. It's maybe rare for people to consider if the shoe's on the other foot.
|What do you consider to be the best layperson's guide to domain trademark law? |
No single best, but I have a few from my bookmarks:
The one from Chilling Effects is my fave.
Trusting these help somehow. (And hope they pass, WebWork...) :D
I also register mostly generics, avoid famous marks and check USPTO before registering.
I second the recommendation of the Chilling Effects site. A couple more:
http://www.icann.org/udrp/udrp-policy-24oct99.htm - the UDRP resolution policy, especially sections 4a-c, which include a description of what constitutes "bad faith" and how to prove "legitimate interest" in a domain.
http://wipo.int/amc/en/domains/ - reading through the actual decisions is an education in itself!
[edited by: MamaDawg at 12:04 pm (utc) on Mar. 15, 2008]
Interesting post, I just applied for a service mark / trademark.
I had always shown a TM next to the domain name, because as I understand it this demonstrates a "claim" to the name. More recently (as traffic took off) the domain became more important to me.
So my progression moved from:
- Obtained domain name
- Started LLC using the same domain name (Domain Name, LLC) - to help protect my domain name.
- Registered as an Online Service Provider with the US Copyright office - to help protect my content.
- Patent and Trademarks - applied for a trademark to protect my domain name.
|IF anyone else has any generic trademark analysis advice to offer now would be a great time to post it up |
Just thought i would add to this having had a couple of trademark issues myself to deal with. Its a very complex issue.
1. It may surprise some to know that a similar mark can co-exist in the same class. i.e "Dons Motors" a garage in "location one" has a trade mark set up as "Dons Motors". Meanwhile a different "Dons Motors" wants to register the same mark for his garage in "location 2". He still gets awarded the TM providing the earlier mark doesnt object or the earlier mark agrees providing the second "Dons Motors" agrees that in wording of the class that "the mark is only applicable to location 2"
2. A similar trade mark can also exist if its in a different class or relates to a different trade business. "Dons Motors 1" sells cars whilst "Dons Motors 2" repairs motorcycles. No conflict.
3. Also, a trade mark can sometimes be "assumed" even if its not been registered at all."Dons motors" 1, had been established in location 1 for 5 years before "Dons Motors" 2 secured a trade mark not knowing about the business in another town
Where the problems comes about is from passing off. ie another company is using your TM name for a similar product/service, trading off your good name. This is where its gets involved and has to be proved:-
The first part, "who registered the mark first?" If it was assumed but not registered, "wheres the proof of its earlier existance where it was used?"
The second part is "How similar is the mark being used in relation to the official TM already registered?"
The final part and most important part is " How similar is the trade using the mark to my trade?"
Obviously, in these matters one should take legal advice but imo for what its worth the biggest problem the OP has is that the mark was already used for a domain prior to his registration of his Trade mark.
The fact that it was parked (no matter how anoying it may be to the OP) is not relevent. The domain pre existed in this trading state prior to the OPs company.
If the domain parker starts trading off the OPs established position then thats different but it looks like the OPs position would be weak as a result of the pre-existance - Thats my two pennys worth anyway.
In this situation it would be better to try and come to an arrangement with the other owner if you can. If you cant and you go the legal route it could get expensive and you have no guarantee that you would win
Hope this helps
>>If the name is that unique, and the client now have an SM, does the client have some sort of rightful claim to the .com version since it has been parked and unused for so long?
IMO it's not retroactive. He bought the name long before you got your trademark. This is called reverse domain hijacking and will fail.
send an email with $ offer in title. Everything has a price. Suing will not help you. You will most likely lose and get a reputation as well. Unless he/she is broke, he will also never sell it to you after the challenge