Every day, I see quite a few domain names in auction with bids that could have trademark issues. Some of these trademarks are super obvious, like Microsoft or Volvo, but others are not as clear. Olympics, for example, is a highly defended trademark, and there are a number of UDRP filings for Olympic-related domain names.
Over the weekend, Peter Askew shared some advice about staying away from generic sounding terms that are actually trademarks. His observations were based on a domain name that is listed on GoDaddy Auctions and will be sold in about one week:
Dear current & future domain name developers,
This domain popped up within GoDaddy Auctions.
No doubt, neat name. Almost seems generic. But it’s a trap.
It’s a strongly protected Wham-o trademark. Even mentioned on wiki page.
Strongly suggest avoiding this one. pic.twitter.com/Tsvho9f1J0
— Peter Askew (@searchbound) July 5, 2020
I am not a legal expert, but it doesn’t take a legal expert to understand the risks of buying domain names with trademarks in them. Many brands actively protect their trademarks, and owning a domain name with a TM in it can result in a UDRP filing or even a lawsuit.
There are many trademarked terms that seem generic. Realtor, Olympics, Koozie, Band Aid, Kleenex, and many other terms that may sound generic are actually trademarks. There is quite a bit of nuance, though. For instance, the company that owns the Koozie trademark won the Koozie.com UDRP but lost the Koozies.com UDRP because of the registration dates.
Domain name investors need to do their due diligence before buying domain names. I once purchased a generic sounding domain name, but upon further investigation, I learned it was a trademark. I ended up contacting the company proactively, and I traded some of their product for the domain name. I ultimately took a loss on the purchase but learned an important lesson.
Just because a domain auction has many bidders, it doesn’t mean others have necessarily done their due diligence. Relying on the crowd for legal due diligence is unwise.