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.
Frisbees .com
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.
Frisbee? Kleenex?
And whatever happened to “genericization”?
https://www.google.com/search?q=genericization
Well, similar to Duct Tape who lost it’s TM due to regular use of the name for this type of tape, all flying discs are called frisbees by people which makes the argument that this TM is no longer valid, hence, they try hard to protect it but, it will fail if the defendant has enough money for the right lawyer. Ever wonder why Google changed it’s parent TM from Google to Alphabet? Interesting topic.
It is still able to understand if Frisbee is a brand. But how about generic terms like Hotel, Booking, Aviation, Travel? How can the regulator accepted trademark feeling for Hotel since there are a lot of people have the same interest in the therm : hotel owners, hotel workers, travel, booking sites etc. Can’t they have the same right to own domain name with word hotel? How can be it is a monopoly of trademark owners? This practice is completely wrong, giving rights to trademark owners to monopoly generic terms
In business IP plays an important role. So, The first step in protecting your business’s intellectual property is to register and trademark your brand name.
Obtaining a trademark for your business is a significant step that will help you protect your brand identity against infringement or theft. Registering a trademark is a simple process that may be completed in just a few simple steps.