When I first started buying domain names in around 2003, I didn’t understand the legalities of registering domain names that contained trademarks. In fact, I registered a few domain names that were infringing on the marks of other companies. After getting a cease and desist letter from one company and giving the registration fee domain name to them, I decided I didn’t want to take a chance with this type of name.
In going through my portfolio to try and sell some names to end users, I realized that I have a few names that aren’t as generic as I once thought.
I own a number of city-keyword domain names, and I started looking through them to sell a few to end user buyers. I own quite a few cityMortgage.com and cityMortgages.com domain names. One is a city in Texas with somewhere around 100,000 people, and I am sure many of the city’s homeowners have mortgages, and there are a number of companies offering mortgages in this city.
In doing some research, I found that there is a bank in Maryland that uses the Texas city name + Bank (I don’t want to draw attention to the name I own, so I am leaving the bank name out). Without getting into legalities since I am not a legal expert, it would probably be okay to sell this City Mortgages.com name to a mortgage company in Texas, but if I pitched it to the Bank in Maryland, they could very well claim trademark infringement. I suppose they could do that anyway, but having an email from me offering to sell the name would make their case stronger.
Point of this post is that when you do reach out to end users to sell generic domain names, you need to be sure that the domain name is actually generic. I almost sent this bank an email assuming they were located in the city rather than using the name as their trademark, and had I not seen the Maryland area code on the site, I probably would have sent it.
There are many generic terms that are used by companies to form distinctive trademarks, and there is a whole lot of gray area, so use caution.
you should never do anything if there’s a possibility it may be illegal.
Enough of the parnoia. Weighing the risks (everything in life has risks) is the prudent action.
Even though the rules are being bent and manipulated by some of the UDRP panelists, if you had no idea of the TM and you had no reasonable expectation there would be one, you should be fine. We need to act as if the rules mean something rather than simply acquiesce to the pressue and admonishments being bandied about…fight for your rights!
Approaching the Maryland bank would not be smart but weigh the risk before deciding. Do they have the TM or are they simply using the name without it?
Generic means just that, apple is generic as it relates to the fruit/flavor and can’t be TMed. Take it out of it’s generic bubble, i.e. as it relates to records, computers or other “non-apple” related products, it no longer retains it’s generic meaning.
Paranoia? Perhaps some readers are less savvy than you and would think of this post as offering good advice.
“Approaching the Maryland bank would not be smart but weigh the risk before deciding. ”
Yes – exactly, that’s the point of my post, so I don’t see any “paranoia” here. I am simply providing advice that I think will be useful to some people. I would have emailed the bank had I not seen their area code on the contact page, as I assumed they were located in that city.
There are a wide variety of people who read my blog, and some people don’t know what’s allowed and what isn’t. I could develop the domain name into a city mortgage site and it would be easily defensible. If I try to sell it to the company, they wouldn’t care about the city in Texas – they would only care that it infringes upon their mark, as they’ve been in business for many decades. In fact, they own the singular (City)Mortgage.com.
May seem like “paranoia” to you, but I bet it’s of interest to others.
Sorry about that Elliott. My initial comment was a reaction to the blanket (and paranoid statement) “you should never do anything if there’s a possibility it may be illegal.” by todara. My comment was simply in support of your article with the added advice of prudence rather than drastic action.
Hi, yes this is ok, but there are still people who want to take money with these things
It’s good advice to use caution reaching out to end users when the generic name is in their mark, especially if you don’t have the funds to take it to court. However claiming trademark infringement on generic terms can backfire. Google “Community First Bank v. Community Banks, USDMD No. RDB 04-1359” (incidentally a Maryland case).
I agree with Chip. Common sense always helps and paranoia will sink you.
By the way, Apple vs Apple http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer and see just how non-generic a “generic” word like apple can really be. What a waste of time and money and the attorneys are the ONLY winners. Not the companies and certainly not us consumers.
I agree… but there are a lot of people who lack common sense 🙂
you are giving us a really good advise and I do agree 100 per cent. i did this kind of recherche befor I bought jatropha.com!
Hi Elliot, Know your site from do time, never write a comment.
How you can write this post if is a great domainer that work for Registrar Agremment of Icann of the U.S. is good give more money to exchange of abuse with the owner generic domain names.
Network Solutions is a exemple that you know his system of for sale generic domain names before of expire the gTDL of the owner, be easy for all the domainer buy by small money un gTDL without expire month, date, year with the Certificate Offers $19 the the generic domain name for sale $25,000.00 with tax or without tax more easy or not.
I have problem with this Registrar of ICANN, I send email ICANN never response, do two month see in whois that my generic domain name in other business, I question if which money desire for sale the generic domain name, the Sales Manager response my email not sale this generic domain name, thank you.
I do other question by which pay Network Solutions for the generic domain name, sales manager response not sale Network Solutions be other person a domainer our payment $150.000 Thank you. Is good the business of the domainer because all the money send in Tax Haven.
Thank you, Elliot by be the best domainer of United States.