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.
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.
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.