Trademarks in Domains...

The general view is to avoid trademarks in domains full stop. But, what if you use the domain to develop a website based around the trademark in the name, and don't play to sell the domain on it's own.

For example, FreeXBox.tld - this would make a website where you fill out surveys and refer friends in order to claim a free XBox. XBox (I assume!) is a TM and yet they seem to manage with it. Is it acceptable to use a TM in such a way?

Cheers! Will

 

It depends, it has been through the US courts but has not gone through British courts yet.

A company used volvoparts.com (or similar) and volvo lost their claim of tm infringement because the court ruled that it was ok to trrade in volvo parts.

So yep it is ok, does that mean you would not loose a drs, nope you could still lose your name.

 

If the worst came to the worst, I'd be willing to let the domain go, and host a new site.

From what you're saying, GreyWing, it should be alright. Thanks (don't worry, I won't cite you anywhere!).

 

Worst that would happen is that you could get sued and lose the name as they could take it from you.

 

Personally I stay clear of any domain with a TM in it, however I guess it depends.

I wouldn't want to invest a lot of money developing something like gucciwatches.co.uk to find myself losing the domain and therefore the majority of the investment...

From my experience, some trademark holders are much more aggressive than others.

 

Not all companies /individuals that own trademarks will enforce it?

Trademarks etc are not quite as simple as you would think how many places have you seen that sells a glass of coke that its not… trying to trade directly off them no good, but indirectly you can

You have abc.com it’s a site that shows there products, does not have any of there rivals/competition on it, they like the look and it appeals to there targeted audience and says what a wonderful product they have of course not trying to pretend that you are there officially site in anyway but only offering your opinion as to how great they are ….?

You can make your money from adverts on it but they are the sort of products that they think buyers of abc products would also purchase, They are not affiliated with them but would like to be...? e.g Rolls Royce and Rolex both would probably want to much from each other to sponsor or be associated with each other but would be targeting the same sort of client and its not affecting them at all and costing them nothing they would most likely leave you well alone ( I have found that if your adverts are more upmarket that item tradmarked e.g trademark beans adverts rolex sort of reverse association that they can even be happy )

But you put up a site that they consider poor which is clearly cs, has there competition on it, does not portray the image they wish to put across then they will enforce it…


But it can be a fine line and you could invest £££ and get nothing or make £££ depends alot on your skills so to speak

 

Thing with people like coke is they become too succesful to protect their trademarks. If you trade on something and it becomes a generic term then you will struggle to enforce a trademark.

For example google starts as a brand, but as it grows it becoems so succesful everyone knows it as a new word for "search" then anyone would be able to trade on it.

 

so would usedmg.co.uk be sensible to site-up, great exacts or will I be wasting my childrens inheritance?

 

Well I wouldn't see any problems with that one and if me I wouldn't let it put me off.

 

Cheers Graham... well it's sell or develop then!!!

Still don't understand the trademark situation tho' - with MG included could they kick-off or would it be difficult for them?

Russ

 

Don't forget mate that a TM owner can realistically do whatever they want, same with DRS's. There is nothing you can do to stop someone hell bent on casuing grief for you.

Point is, would they be succesful in court?

You'd have to decide on that issue but there isn't a black and white rule for it I'm afraid.

 

That's one point. Another, which is often used by the big business, is whether you can afford to even find out if they will be successful in court. When the TM holder sends you a letter stating that they will settle for a return of the domain, a few K costs, and every penny you have ever earned from the domain, can you afford to call their bluff?

The domain industry needs to mature, I do not now why every question such as this is not just answered with, just stay away from TM! Just imagine a small business forum where people post "I think I can make a few quid by opening a shop called Coca Cola Smoothies, do you think I should?"

I would only ever put time and money into a domain regarding a TM after I had prior permission from the TM holder to do so, and even then I wouldn't put much of my time into it - a business that could be taken off me at any point in the future if they suddenly decide they do not like what you are doing.

Sorry GW, this isn't a punt at you, just amazed this conversation keeps coming up, it does the domain industry no good, it just keeps the cybersquatting accusations in the press going.

 

That's not what is being asked, what is being asked is should someone trade on an extrapolation of a trademark and as I stated above the US courts have said that it is ok and ligitamte to do so.

Volvo domain name owner did not break rules, says WIPO | Pinsent Masons LLP

Audi Hits Bump in the Road in its Trademark Infringement Suit Against an Audi Parts Supplier - Fredrikson & Byron P.A.

 

That does not mean the using of it is wrong morally or legally but only goes to show that the current system is baised towards those that have the funds..? That does not make them right because they have more funds?

As the poster was incorporating the supposed trademark with other words it’s not necessarily a trademark anymore as greywing example above shows.

There is also a greyish area with trademarks that people do not understand what exactly they are…?

A company has a TM for abc with red letters inside a blue box (a logo) that does not automatically mean they have the TM for the letters abc but that does not stop the owner of TM giving you grief and saying they own the TM , There are plenty of examples of domains that have been around before TM etc existed then try and reverse hijack,

These may help some

Intellectual Property Office - Trade marks are signs which distinguish your goods/ services from your competitors


Intellectual Property Office - Registering your trade mark gives you the exclusive right to use your mark in the UK


Intellectual Property Office - Passing off unregistered trade marks


http://www.ipo.gov.uk/types/tm/t-about/t-whatis/t-domain.htm

 

Very good references for fair use of a TM, and very important to lots of legitimate businesses that are based around someone elses primary business.

However Volvoparts.com had been selling Volvo parts since the 50's. If the people asking the questions had been selling used MG's for some time I would say go for it, but with the proviso they could still be taken to court. If the site the OP referenced had a real business providing free XBoxes for some time the same applies. But I suspect they are not, they have just spotted a way to set up a website that earns a few quid via some elses trademark.

 

But Geo above you said that all thse should be treated with a simple Quote GeoMal "just stay away from TM!". Although now you are ok if it has been operating for sometime?

Now as we said before these things aren't that simple.

Going back to your argument above, I don't feel it stands up. That is like saying a certain company has been stealing for 50 years so they may as well continue. That's because Volvo would have had the same TM rights in their name and extrapolation of their name for the past 50 years and could have enforced it at any time.

Plus that's not the reason WIPO gave for their decision anyway, WIPO said that it was not being operated in bad faith.

Quote decision:

"A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements," said the WIPO ruling. "These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark."

 

GW, this is an interesting argument.

This to me is the crux of the matter. Selling parts for Volvo cars, even if OEM or pattern parts, does not infringe the TM directly. It is a grey area for the use of the Volvo name in the business, but the owner of such a business is acting in good faith in describing their business. However, even then the TM holder may have enough of a case in having a punt at them - remember all the businesses in the UK that dealt with the old mini, then had a letter from BMW prior to the launch of the new mini? I basically said remove the word mini from your business, or else we'll have a go.

Setting up a website that is purely to use the Google ranking system to make a few quid (or even lots of quids) on the back of TM searches is not the same in my eyes. If the person earlier has been selling used MGs for some years, then this is an accurate description of their business. If they are simply to set up a quick website with Adsense or eBay, then to me they are simply TM squatting.

There is of course the common view that they are big boys, can afford to miss a few quid, fair game etc. However, I actually have a TM myself, and it has been nothing but hard graft for years, if someone out there set up a website to capatalise on my hard work I would feel robbed.

Nothing ever is, I would agree. I also abhor reverse hijacking, and TMs are often not that clear. The bounce.co.uk decision I though was farcical. Ask a person in the street what is bounce, or type it into google, and you will not get a fabric softener as the result. Others are clearer though, again ask the person in the street what is MG or Xbox, and you will get a clear result.

Hence my first position, especially for newcomers to the domain game, is stay away from TM.

Good debate!

 

Yep I think the only answer is to use common sense on an individual basis.

Rather than a blanket ban on TM's. I tend to stay away from anything that abuses someone or a companies rights. If I feel that it can be morally acceptable and legally right then I would argue for it. Now most tm's fall within that but there are the odd couple that tm's are laughable.

Yep for new comers to the game I would say that they should know the tm inside out and weigh up all the pro's and con's.

It's certainly that gets a lot of people talking that is for sure.

 

While I agree with the comments and tone of the discussion, we should all be aware that there is a motion going through the ICANN rules which will enable TM holders to "shoot first and ask questions later".

Whatever the legal situation, the crux of the matter is that there is a proposal "in the works" to amend ICANN rules which will allow a TM holder to object to any name they feel infringes the TM. Providing they show evidence that they hold the TM, the ICANN host will pull the site down, or risk losing their Registrar status. Then everything will get messed up in US legal harangues for years.

This change is being pushed through by the "big boys", and it looks like there is no stopping it - it will happen within the year, so if you have a TM .com or .net, start making alternative plans NOW.

Mucking about with trademarks is always a matter of civil law, not criminal law, and in the US it takes even longer than in UK to get resolution, because a TM does not have to be registered to be recognised as a TM.
The ICANN rule will short-circuit the law - an objection will take that site down sine die. Then you have to fight to get it back up, using courts and the law (with the associated costs) ...