Do the Right Thing

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A few days ago I acquired a great product-related domain name using Sedo. I saw the name at a good price, and I bought it after doing some due diligence, including a Whois History search and a quick search of the USPTO database. All of this came back without any problems, so I bought the name. As I’ve mentioned, I have been selling some domain names lately to pay off the cost of the Burbank.com acquisition, so I emailed a few clients and acquaintances offering this name for a good price.
Several hours after I sent the email, one of my acquaintances emailed me back with a listing from the USPTO. Unfortunately when I was searching for “this product” in the USPTO database, there were no listings; however, a search of “thisproduct” as a single word would have yielded the result. The product is similar to “Band Aids” in that other products in this category are often called “this product,” although it is less common than Band Aids, and the product has only been around for 5-6 years – about the same time as the industry. I emailed the original owner of the domain name (since 2003) and he told me he never received any inquiries or other communications from the TM holding company.
I am no better than anyone else, but I don’t feel comfortable owning, monetizing, or selling this domain name. I don’t want to potentially create a problem for someone else, even though all indications are that this domain name won’t cause a problem, since it’s been free and clear for over 4 years. I have taken this domain name off the market and changed the DNS from Fabulous, even though the name received about 8 uniques a day in the 2 days that I monetized it.
People often tell others to do things that they haven’t tried or wouldn’t do. It’s very easy to tell someone else how they should be managing their business, but it is much more difficult to actually do things sometimes. I am going to email the people to whom I sent the original message, and I will let them know that the name isn’t for sale. While I will lose several hundred dollars on this, I will sleep better knowing that I am doing the right thing.

1 COMMENT

  1. This is a reminder That I need to create a checklist so I don’t overlook any trademarks. I’m a flipper, so I can’t afford to invest in a domain that I can’t sell.

  2. I always feel in instances like this it is too bad there is not a “friendly, I am not exploiting you” means to contact the company who should own the domain and see if they will pay you a minimal “consulting fee” in this case, possibly your acquisition fee. I understand the backlash that would result as a “loophole” to register TM terms, but if it was a sincere error or just the potential for conflict, why not a friendly introduction and discussion procedure with a Payment Cap – say $1000 on these discussions. I direct example myself was SmoothShaveGel.com which I grabbed off a drop. As mentioned, this worked out well for all parties, but that was due to all parties being fair. Seems this is not the usual process as most assume “evil” intent from the start.
    Also, should you decide not to re-reg the domain every year, it will be picked up on a drop by someone else. The process never ends and the real end-user could benefit were it not for the “contacting fear”.

  3. I just spoke with the attorney of record for the company that owns the trademark. He is going to reach out to the company to see if they would like the name at no cost. I took a risk by calling, but it was the right thing to do.

  4. I hope it was a unique word or phrase. To just cough up a name because someone has a TM is not always the best course of action and may set a bad precedent for other domainers. You did not know about the othe company’s TM when you acquired the name and could never be accused of Bad Faith.
    Case in point. We own Caution.com. A company that has a TM for Caution took us to UDRP arbitration in 2003. Our position was that we’d never heard of this Caution company and, most importantly, we were not using the name in a way that would confuse the public with their services.
    We won.

  5. I think David has a point with regard to truly generic terms that some companies have TMs on. It’s a fine line though.
    It could all come to nothing as well. Years ago when Albuquerque’s new baseball team was announced I was shocked to find out that they hadn’t secured the domains albuquerqueisotopes.com and abqisotopes.com. Instead they were relying on albuquerquebaseball.com. I’m a huge baseball fan and I wasn’t trying to exploit them when I registered those names. I was doing it because I wanted them to have the names. I got in contact with the GM and eventually the owner with an offer of just transferring the names to them. Their response was shocking: “No, we’ve already gone with albuquerquebaseball.com and don’t want to start over.” They just didn’t understand.
    I hope it works out for the best for you Elliot. Please let us know what happens.

  6. Elliot voted with his conscience, and that’s a good thing.
    It’s tough to lose money buying a domain like that, but I’ll bet Elliot will eventually reap some kind of reward for doing the right thing.
    I have a few stinkers, bought when I didn’t know any better, but at least they were reg fee.
    As for “caution”: I don’t see how the trademark owner could go after that word. The entire dictionary would be up for grabs by greedy companies.
    I’m glad you won.

  7. A trademark only gives the holder the right to a name in the specific industry that they are in. In your example of Band Aids I could use Bandaids.com as a website/business that offers products and services to musical bands. It would only be illegal if I tried to use it in anything associated with the medical field.

  8. Ace.com just won a huge UDRP decision. Andrew has it at DomainNameWire.com.

    ***UPDATED BY ELLIOT***
    Huge difference between the two names. My name was only a few hundred dollars as well and wouldn’t have been worth defending if it ever came to that. I still haven’t heard from the company.

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