Using Trademarks in Domain Names

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I was searching Google for an accessory for a new Apple product, and I was surprised at the number of domain names that included Apple trademarks. Since receiving a cease and desist letter from a company several years back when I first started buying domain names, I have been very careful not to buy   domain names that contain obvious trademarks.

I believe many domain investors look at this and wrongly believe that the seemingly free usage of trademark domain names means that the trademark owner doesn’t care about protecting its marks, and domain investors can buy and sell them with limited risk. Although the risk may in fact be low for many trademark domain names, the penalty can be very high – up to $100,000 per domain name according to the Anti-Cybersquatting Consumer Protection Act.

Apple may not be a company that appears to actively litigate for infringing domain names, but there are plenty of companies that do – like Microsoft. When thinking about buying these domain names, especially when the sole purpose is resale, you should consider the legal repercussions.

There are plenty of people and companies that make business decisions every day because they own revenue generating domain names that contain trademarks, but newly minted domain investors probably have a much lower chance at hand registering TM names that will produce revenue. If you own a TM name that doesn’t make money, you have a liability rather than an asset.

I know Rick talked about registering BP spill-related domain names that generate PPC revenue, but keep in mind that Rick can afford to fight a legal battle if necessary. It’s the cost of doing business. Others who try to emulate this type of registration may not be so lucky. There are plenty of companies and lawyers who would like to make an example out of someone.

7 COMMENTS

  1. Hi,

    Great Point(s) Elliot!

    2006 – present day…

    MS sued Hundreds if not thousands of people and company’s having anything remotely close to any their TM’s for their company or products…

    And won multi million dollar judgments against 95% of them.

    And YES,

    The sued them all in “Federal Court”…Under the “Anti-Cybersquatting Consumer Protection Act”

    And more importantly along with the:

    “Lanham Act, 15 U.S.C. § 1114(1) and § 1125(a); ”

    http://www.lectlaw.com/files/inp25.htm

    This is what allows them to sue you in Federal Court and get larger judgments….

    —–

    And MS…is really bad about it. They thought this domain was TM infringement of their company and did sue for the domain:

    msblog .com

    Which at the time was not “resolving” to any page…

    Now you cannot tell me, that “MS” could not stand for a thousand different things.

    How about: “multiple sclerosis” …just to name one.

    MS is pretty “Brutal”…about this.

    BUT,

    BP or anyone else can be also….if they choose to do so.

    Being sued in “Federal Court” by a Huge Company… is NOT the position you want to place yourself….no matter how much money you have.

    And especially if you do not have the “resources” close to fighting such action.

    At 100K+ per domain, Plus 3x the revenue they can prove you earned from a domain, plus other damages…

    Most people….could get wiped out just owning less than 3-5 of the wrong domains….”resolving” to the wrong “Parking Page”

    Tread Carefully Everyone….

    Peace!
    Dan

  2. You’re absolutely correct that fighting a federal lawsuit can be expensive, but even if you are never sued, infringing on someone else’s TM is wrong.

    I commented previously that I felt Rick’s admission/bragging that he had purchased some BP domains only served to reduce Rick’s credibility and further give the domain industry a bad reputation. What does it say about the industry when the Domain King cybersquats and others in the industry don’t point out the error of his ways? I’ll give you credit, Elliot. At least you are willing to talk about it.

  3. I own 2 “Manhattan(generic) dot com” names. Recently found out Yahoo banned them for the trademark word “Manhattan”.
    I searched the TESS and there are a lot of “Manhattan” named products out there. I don’t understand this one.
    Any insights ??

    thanks,
    Ed – Michigan

  4. @ Lou Mindar,

    Lou, YOU are absolutely correct (and brave) to comment on the careless and potentially damaging advice given by “the Domain King” on his blog. I actually wrote a blog article for my blog about this, but held back, trying to give some respect to TRAFFIC Vancouver.

    However, that conference is over. Check out my article discussing exactly what you’re talking about here, in detail.

    With success, comes responsibility and maturity. You’d think some domainers would follow this path and stop posturing about how “great” their choices are and how “dumb” the rest of us are for not “listening.”

    check it out: http://www.successclick.com

    *thx Elliot

  5. Quote [I own 2 “Manhattan(generic) dot com” names. Recently found out Yahoo banned them for the trademark word “Manhattan”.
    I searched the TESS and there are a lot of “Manhattan” named products out there. I don’t understand this one.
    Any insights ?? thanks, Ed – Michigan]

    How do you know for sure that they are banned, yahoo would have sent you a letter, are you indexed google, either way i would try adding a wordpress site with some yahoo plugins, and test it from there, if somebody had it before you it could have a bad history and thats why its delisted

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