Easy to make Domain Name Mistakes that can be avoided
The Registered symbol for trademarks that are registered.
Sometime after I had accumulated about 500 domain names, I was reading about trademarked domain names and the cautions about having or using them. Yes I knew about trademarks and registered names before, but never figured I’d run into any problem in holding or using them.
They Demanded my Domain Name!
One day I received an email from a registrar about a domain name I had. I wasn’t using it so that didn’t enter into the picture. It happened to be from a registrar in Germany. They told me to transfer my domain name to them. I felt like telling them exactly where to go, but I didn’t. I restrained myself.
It turned out that the domain name I had registered was the same as a bank’s name, I believe, in Germany. They had the .de German extension and I had the more valuable .com extension. I knew I wasn’t going to turn over my domain name to them and if they did get it was going to be by force. The strange thing was that I had made up the name from the word bank and another rather nondescript word. They were both English words so it was surprising that a bank in Germany would have such a name. It didn’t make sense, but what do I know.
I Contacted My Registrar
I was not sure what to do so I contacted my registrar, who happened to be based in Australia. I explained the letter I got and asked them what I should do. They said to do nothing and that that registrar couldn’t get it from me. They said they get those sort of demands a lot, that I had nothing to worry about. I was glad to hear that.
How unreasonable is it to think that because someone has the same domain name, but with another extension that they can , at will, take your domain name away from you? Sounds silly, doesn’t it? But beware those kinds of things can happen.
Another Demand for my Domain Name!
Back to my situation. I did nothing. A short time later I got another letter demanding me to transfer my domain over to them. I refused, but this time I made them an offer to buy the domain name from me for what I thought was a reasonable amount. I don’t remember the exact amount, but if I recall it was in the very low four figure range. They didn’t accept my offer or even reply back.
Now I suspect it was a bank that was trying this dirty tactic but don’t know for sure. It could have been someone trying to capitalize on getting a domain name for free that was worth a lot to that bank. I’ll never know. I suppose because my domain name was the same as a bank in Germany and that bank had a couple of other prefixes with their name, they wanted the other important name, which I had, since only one person or company can have a specific domain name.
That incident passed with maybe one more demand for my domain name several months later. I still didn’t have a site on the name as I was originally reserving it to put a financial site on at a later date. Now that would have probably caused a real problem if I had a site up with their potentially trademarked name.
Trademark
From Wikipedia, the free encyclopedia
A trademark, trade mark, or trade-mark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself.
Is it Trademark Infringement?
That could be trademark infringement and I feel sure their lawyers would have liked to see that so they could sue me. I ended up keeping the name for a few more years and finally let it expire. I was hoping they would come to reason and buy it from me. But that never happened.
So here’s the bottom line about this:
Don’t knowingly register a domain name that might be trademarked.
There are lots of other caveats about this, one being that famous people , i.e. movie stars, singers, politicians, or other public figures have priority and rights to their name, even if it is a domain name. Even if you have a different extension it may not make a difference.
Domain Attorneys are Not Cheap
In any case you will almost certainly need a lawyer if someone like one of the above or anyone with a trademark of the name you have really wants it badly. If that happens, it could easily cost you $50,000 or more to defend your domain name. It probably wouldn’t be worth it unless you had a site on it making lots of money, enough to cover the cost of a lawsuit and you or your lawyers felt sure you could win such a lawsuit.
Strange. This almost looks like a pig. Don’t be like a pig and register trademark names in hopes of profits selling the domains to the trademark owner. You’ll be in the pig pen for a long long time.
It’s when you register a domain name that has a trademarked name within your domain name. It’s not the whole domain name, but is mixed in with other letters of the domain name. An example might be Googlelicious.com, or some other extension. That could be a registered name, I didn’t check, but it has the makings of a very big lawsuit if the company (Google) decided they wanted to protect their trademarked name.
Some companies do, others don’t go after anyone using their trademarked or registered name. But it’s risky having such a domain name for when you least expect it they can easily snatch it from you and there is little, if anything, that you can do about it. Of course you can always get an attorney, but as mentioned previously the costs can be enormous.
Trademark within a Domain Name is No No
So mistake number two might be:
Don’t register a domain name with a trademarked name within it
At the same time I checked my domain names to see if I might have another name that was an obvious trademark. Sure enough I did. In fact I had an eCommerce store on it and it had been on it for quite some time. To make matters worse, it had the name of a trademarked name of one of the biggest, or at least very well-known, especially to kids, software game systems. The name I had was one of two such, similar domain names. It was xboxboy.com. I had an eCommerce store selling Xbox video games.
I kept that name and store until about maybe two years ago, at the longest, maybe up to about a year ago. I finally decided it was too risky having such a domain name. I still have the other related domain name, but it never had a sight on it. The name I decided to keep is one that previously made about $300 parked at my registrar. It seemed that when a new version of Xbox came out that the clicks on my domain name paid a ridiculous amount. I am hoping for another big spike like that in the future.
The Risks are great – stay away from Potential Trademark Issues
I am not a lawyer, but I think the big risk with such names is if you have a website using such a domain name that is similar to or the same as what the company with the trademark is doing and you are selling or promoting not related to that company. In a case like that you would effectively be using the name recognition of that company to get people to your site while in no way being associated with them.
For example with my xboxboy.com site I happened to be only selling Microsoft Xbox games. That would likely be less of a bad thing than if I was selling something that was not Microsoft’s or not an accessory of Xbox or the site put Xbox in a bad light, etc.. Then I feel sure I would feel the bite of their attorneys.
Although I am giving you warning, it is common to see domain names which have trademarked names within them. Here are a few random examples from a search I am doing right this minute:
yahoo.match.com www.yahoostatus.org www.yahoofarm.com www.ibmsecu.org www.ibmdatamag.com www.bmwstep.com www.applebees.com www.applecreekusa.com www.apple-sauce.com www.msnswitch.com www.msn-tools.net www.msn-logistics.us
Don’t do this! Just Say NO which is also a phrase you hear on TV about drugs (I hope it’s not copyrighted or possibly trademarked!). That is, NO to registering any potential trademarked domain name or names of famous people or companies. That way you’ll avoid those domain name mistakes by not registering a domain which could end up being a very costly nightmare.
About Charles Harmon
