I have found that when a domain investor owns domain names with generic terms, like NewHouses.com for example, they are generally free and clear of trademark issues, aside from when a bullying company wants the domain name and is willing to take legal action to fight for it. However, there are many terms out there that may seem like they’re generic, when in fact they are protected terms that are often vigorously defended by trademark holders.
I am not a lawyer and don’t pretend to be one, so take this with a grain of salt. However, I believe that in order to keep a trademark active, the trademark holder must protect its ownership of the mark, so that others can’t claim it’s free to use by anyone. For example, while Google loves that people are “Googling,” they need to protect that term from becoming public domain and prevent others from using it.
In fact, I read something unrelated to domain names, but backs this claim up. In reference to Bud Light’s proposed “Fan Cans” with college athletic team colors, Vince Sweeney, Vice Chancellor at University of Wisconsin said, “If you don’t protect your trademarks, you eventually lose them, so we felt it was important to at least communicate to them that we didn’t think it was an appropriate tact.”
That said, there are terms being used by many people in domain sales threads that are actually protected by the owners of those trademarks. One of the most commonly used terms that I believe people don’t realize is a trademark is “Realtor,” which is a trademark of the National Association of Realtors. This organization protects the term “Realtor,” and has many rules about how the term can be used, especially when it comes to domain names and websites.
Additionally, there are terms are protected in some countries, but generic in other countries and free to use in advertising materials, including domain names. Some of these terms include Band Aid, Yellow Pages, Kleenex, Yo Yo, Escalator, Aspirin, Thermos, and many others. There are also terms that are free to use for some types of products and services, but others are protected by brand owners who are borderline over-protective.
While some people might think it’s unreasonable to do trademark searches before buying every single domain name, it can save the domain investor from registering infringing domain names – especially when the objective is re-sale rather than development.
Last night, I received a huge list of domain names for sale, with nearly all of them containing the name of a popular brand. The owner claimed that the brand name was his last name, and that the company had never contacted him about the domain names. Perhaps it was okay for him to own the domain name, although some of the names were clearly related to the brand rather than him (they contained the brand name + product type), but they wouldn’t be okay for me to own since I have no relation to the brand name or to the brand.
It costs under $10 to buy a domain name, but if you buy a domain name that infringes upon a company’s trademark, it can cost thousands of dollars to defend, and some companies don’t care as much about the infringing domain name as they care about making an example out of the domain registrant.