Many TMs – the Good and Bad

It’s important to have a basic understanding of trademarks when it comes to domain investing. I have absolutely no legal background or expertise, but I have done my own research by following UDRP filings and various litigation involving domain names. Basically what I am saying here is that this should not be construed as legal advice because I have no legal expertise.

Over the weekend, I saw Theo’s article about a nice domain name that was sold at Sedo. A reader there commented about the number of trademarks for the term and how that makes it risky. I want to share one good aspect of a keyword .com domain name having many trademarks and one bad aspect of that – from my perspective as a domain name investor who buys one word .com domain names.

The Good:

My company owns quite a few one word .com domain names, and there are many trademarks with those terms in them. In my opinion, many trademarks held by different entities helps to show that my company acquired the domain name because of its wide usage. I think one company would have a difficult time showing it has more rights to a one word .com domain name than my company or other companies. In addition, UDRP panels have given deference to domain investors who are buying dictionary and generic keyword .com domain names for investment purposes. I also think my usage of the domain name would further help my case.

The Bad:

On the flip side, many trademarks for a one word .com domain name can make it more challenging to sell. Yes, there could be many companies who wish to upgrade to the one word .com domain name, so that channel should be ripe. However, with many trademarks in different fields, a startup or company seeking a rebrand may be more reticent to make a substantial investment in a domain name where its usage could be challenged. For instance, a cybersecurity startup may not be willing to spend $100k on a domain name where a different trademark registrant has a TM related to computer services. They won’t necessarily infringe but also don’t want to spend $100k to buy the name, spend additional marketing dollars on a rebrand, launch and get a C&D.

I’ve sold many one word .com domain names. Some were to companies that upgraded and others were to startups and entrepreneurs for various projects. I have also negotiated deals at length only to have the deal die on the vine because the prospective buyer grew concerned with the number of trademarks that could possibly be infringed upon.

As with any legal questions, you should consult with an IP attorney for any questions related to trademarks and domain names. I don’t have legal expertise, so these are just two of the considerations I make for myself when evaluating risk related to a domain name acquisition.

Elliot Silver
Elliot Silver
About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has closed eight figures in deals. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest. Reach out to Elliot: Twitter | Facebook | LinkedIn

3 COMMENTS

  1. Great comments and input and with valuable non premium one word urls, domain investors should protect the assets from TM issues as best as possible with information, data and streamlined action. Time and again companies are filing for TM with main purpose to take the URL or box it in on its usage. DNTrademark is debuting at ICA this week, come check it out and sign up for a free domain monitoring. Version 2 feedback is welcome and our goal is to give URLs one more tool to protect any URL asset and its rights in the mark.

  2. all premium domains, one word, generic or brandable should protect its online identity rights or at least be aware of others looking to use the same Identity online. Be aware, people are trying to take URL’s by using the USPTO registration process or box your usage of such descriptive brand. DNTrademark is a new tool would recommend looking into if you really want to protect and monitor your valuable portfolio of URLs.

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