Is a Domain Name an Automatic Trademark? 251
TheWorkingStiff writes "I registered a descriptive domain name (something like "thesimpledog.com") and started a blog on it. About a month later I get a threatening letter from a link farmer who owns "simpledog.com" The owner of simpledog.com is claiming that he owns the trademark to the words simpledog even though he has no real business or rights by that name other than a static page with some text and Adsense slapped on it. There is no product, service or brand whatsoever. Does simply registering a two or three word domain give you instant trademark rights to those words even though you've never done anything with them? Should I give up my domain to a link farmer who is trying to bully me, or does he have a valid right to any phrase he registers that isn't already trademarked?"
Automatic Trademark? (Score:1, Informative)
No, it's not trademarked (Score:5, Informative)
The troll is just being a troll. Don't give in.
Trademarks (Score:5, Informative)
It would also be interesting to see what catagory he filed under.
You can file a trademark in any one of several categories (about 23). So you too could have a trademark on the same word and it would not conflict (eg. Ford Florists and the Ford Motor Company both have a trademark on Ford, but since the name use would not cause market confusion, they are both ok).
If the category is bogus (some technology one might be ok for him to use) you might be able to get the USPTO to force him to prove the use of his trademark in commerce.
Also if you were using the trademark before he filed, you should be ok by law, but anecdotal evidence shows that you will still lose your domain.
On a related point trademarks can be filed in more than one country, so what country trumps what country if there is a conflict? (I guess since
I have seen no discussion on this.
I am not a lawyer do not take this as legal advice. It's not. It's the ramblings of someone who holds a few trademarks himself.
Don't feed the spamming scum (Score:5, Informative)
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The page simpledog.com is one of those totally automated junk advertising pages, obviously with a picture of a dog.
Now you know this, you won't be at all curious about going there.
A shitty database-made spammy advert webpage won't give you any weight in a trademark dispute.
ridiculous. (Score:4, Informative)
Re:Trademarks (Score:5, Informative)
Re:Well (Score:5, Informative)
Looks pretty clear to me.
Re:ridiculous. (Score:5, Informative)
No, really, they have.
They're even running political polls. Granted the last one, from the 8th of October, was "Should George W. Bush be impeached?" and the current one is "Does The Media Favor One Party Over Another In It's Reporting?", but the days of being NSFW seem to be over.
At least until cadidates have been picked. : )
Re:Automatic Trademark? (Score:2, Informative)
1. It had to be used in interstate commerce - in other words I had to do business in more than one state.
2. I had to do business.
I don't know if link farming is a trade or business but lets assume that it is. If you are not in the link farming business then your trademark is likely not infringing on his trademark. Moreover, even if you are in the link farming business if you don't have overlapping market areas then you don't have a problem. I think the guy is blowing smoke up your skirt - but if he hires a lawyer you may have to hire a lawyer.
I had a clear case of trademark infringement where I owned a trademark and a competitor just a mile or so away took my mark and added a state to it and started doing business under that name. My extremely good lawyer told me to buy the name from him because it would cost me $ 2,500 minimum to go court. I bought the name for $500 so I saved $2,000. I would have won the court case but I would have spent more money. Just some practical advice from someone that has actually been there.
BTW I used to have an BBS company that had a name with a word that was also used by a famous computer company who changed their name in the late 1990s. After sniffing around a little bit asking me how long I had used that name they left me alone. I had it before they changed their name. I guess what I am trying to say is that is it not hopeless but it might be expensive. Learn to fight the right fights. This may or may not be the right fight.
Re:Not even a real business or site (Score:2, Informative)
Did you guys miss the part in the summary where he says "something like thesimpledog.com"? The use of the word like in there indicates that this isn't the actual thing, but something similar to it. There are quite a few responses here basing your answers on the appearance of the example website which isn't the site he's actually talking about.
Re:Here's are similar cases with federal court rul (Score:5, Informative)
That was a reporter for Wired magazine Joshua Quittner, who, back in the early days of the net (1994), noticed that McDonalds had not registered McDonalds.com. So he himself registered it, contacted the company, and documented the whole thing, prior to giving the domain to McDonalds.
http://www.wired.com/wired/archive/2.10/mcdonalds.html [wired.com]
Re:Trademarks (Score:4, Informative)
I happen to know all of this because I went thru the legwork of registering my band name "Highland Sun" with the USPTO. A horse ranch somewhere in Kentucky (IIRC) wrote me a letter claiming I was infringing on their name "Highland Sun Farms", registered in their state and I wrote back essentially (1) we're not in similar businesses, no one will ever get us confused and (2) mine is Federal, yours is state; if you want to push this, you'll lose. They went away.
Groklaw: Info on Trademarks (Score:5, Informative)
As others have said, you have to use the name in a trade or business in order to claim it as a trademark, although you do not have to register it with the USPTO; registering the trademark does provide you with some additional legal advantages.
The Groklaw page has a number of useful links that provide more in-depth information.
Re:Automatic Trademark? (Score:4, Informative)
Ask him how he is using the mark (Score:2, Informative)
Unless it's a made-up word he can't prevent the same word from being used in other areas of trade.
If his use doesn't conflict with the way you intend to use it, you both can use it and both trademark the term.
If your uses conflict, whoever took steps to establish the trademark for that particular usage first wins.
Unless you are using the term for domain-parking, I don't see you having any conflict.
Have your lawyer send him a "put up or shut up" letter.
Re:Automatic Trademark? (Score:5, Informative)
Atually ... (Score:5, Informative)
While a person CAN be held to have a valid trademark just by usage, if you're not in the same jurisdiction, or not offering the same product or service, you can ignore him.
The "not offering same product or service" is easy to understand - if there is little likelihood that a consumer would be confused between your "product" and his non-existent "product", then you also have a valid right to the same trademark. Lexus Peas was sued for infringing ont he Lexus brand, and the judge held that there was no chance of confusion in consumers minds between a can of peas and a car.
The "same jurisdiction" is also easy to understand - if he wants to "do something about it", he'll have to sue you in your jurisdiction, and that costs $$$, and a link pharmer simply won't spend the money.
Also, you can put a disclaimer at the bottom (without a link back) saying your blog has no relationship to the link pharmer, explaining the pharming business, etc. This way, you might become the cononical reference on the net for that particular url.
Obviously, your blog is taking traffic away. Why not point us to the landing page so everyone else can choose one link to "reverse-pharm" with a blog with some content using the same name.
The real domain names are... (Score:5, Informative)
I did speak to a lawyer initially who specialized in this sort of thing and he said, "Sure, you'd win in a UDRP case..." Then I thought about it some more and I realized that most lawyers only take cases they *think* they would win. It wouldn't be a guarantee... and I'd hate to have a 6 month old blog with traffic and readers suddenly get ripped awy from me. Unfortunately there doesn't seem to be any way for people who are being bullied to file any sort of counter complaint in matters like these.
The real domains in question are my site (which is down for the moment) http://www.thesimplemillionaire.com/ [thesimplemillionaire.com] and his site which is the same, but without the word "the." He couldn't furnish anything saying he had used the site for any more than a link farm, though he did say that he had some magazines sent to the name "simplemillionaire." Nice. I've had magazines sent to my cat, but that doesn't make them taxpayers (hmm...)
The threats from the owner of simplemillionaire.com also detailed how he was going to sue me to pay for HIS legal expenses. Again, I don't know how kosher that sort of threat is. This guy owns a company called SimpleVentures or something which seems to specialize in buying domains and selling them... apparently in a greasy way. His original email to me immediately suggested that I pay him a "licensing fee" for my domain name because it was similar to his. He boasted of selling the domain CapitalManager.com to the Hartford Insurance Group.
All this for a stupid personal blog that was only about three weeks old.
Bottom line: I didn't want to risk spending my next three months fighting with the jerk and dropping a couple grand in legal fees. But I'm keeping the domain name for the moment... You know, just in case...
Yes, I was using GoDaddy... Sue me. Wait, don't.
Is the poster or the link farmer American? (Score:3, Informative)
your risk is low (Score:2, Informative)
Simply having a trademark is insufficient (Score:4, Informative)
- (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- (ii) you have no rights or legitimate interests in respect of the domain name; and
- (iii) your domain name has been registered and is being used in bad faith.
You'll notice there's an "and" between each of those. All three have to be true for the complaint to even be considered. Section 4b outlines some examples of "bad faith".- (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
- (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Please note that putting a parked page with targeted advertising on the domain is considered a legitimate business use. However, it's generally considered to have the lowest priority among business uses. If its use infringes on the trademark of another (non-targeted ad parked page) legitimate business, generally ICANN comes down on the side of the trademark holder and authorizes the transfer of the domain to the trademark holder if that trademark is somewhat well-known.In other words, even if the other site has a trademark on SimpleDog, if you're using it for a legitimate business and your site does not compete with them (does not leech off their fame for commercial gain), you're pretty safe [nissan.com]. In fact, if your thesimpledog.com site became famous and you were able to turn it into a multi-million dollar business venture with widespread name recognition, and simpledog.com was still an advertising site which advertised what your business sold, you'd actually have pretty a good chance to get their domain transferred to you. They would be leeching off your fame for commercial gain, and thus satisfy definition 4b(iv) of using the domain in "bad faith".
(Incidentally, section 4b(i) is why you never, ever put a dollar amount on your domain in these cases. Their lawyers will immediately jump on it as evidence that you're using the domain in bad faith.)
Wrong (Score:3, Informative)
So with a domain name, if the name is being used as a distinctive mark in the sale of something particular, then under common law the owner of the business has a right to the mark just for the category of goods or services sold, presuming that nobody else is already using a substantially-similar mark for other goods or services in that same category. Further, until they (1) have actually sold goods or services using the mark, and (2) have subsequently registered the mark on either the federal or state level - or both - they can't go to court against you.
Re:The real domain names are... (Score:2, Informative)
Second, I did spend a good deal of time reading past UDRP cases... They generally only consider trademark if it was registered before the domain was registered. So running to get a trademark after the dispute begins may be helpful, but would probably not sway the UDRP...
Third, one of my biggest problems is that I'm not 100% sure if he actually used the name as a product or not. Yes, I tried Google... Believe it or not, Google does not contain all of the world's knowledge.... They won't have that for at least another 6 months...
Again, thank you to everyone... The lawyer I spoke with would defend a UDRP case (it's all just paperwork, by the way...no real meeting or even phone interview) for about $1000, flat fee. It sounded pretty reasonable to me and I even figured I could probably defend myself if I didn't feel like dropping the grand....
Re:Well (Score:2, Informative)
No. In fact (with a nod to Strongbad [homestarrunner.com]), answer equals very no.
Copyright protection is automatic upon creation under U.S. federal law (although *enforcement* of that protection in court requires registration); trademarks do not work this way. While one may claim a common law trademark and notify others (through the use of a TM or SM) that the user considers the mark a trademark, the enforceability is extremely limited. For federal trademark protection, one must not only apply for registration, but have it granted by the U.S. Patent and Trademark Office [uspto.gov], after a long process and a fair amount of back and forth with the examiner. Registrations will also only be issued to marks that are currently in use in commerce--one may start the registration process before the mark is in use (an "intent to use" application), but it won't be issued unless one gives the examiner proof of use (e.g. labels, packaging). (States may have analogous processes.) Even once a mark is registered, it only gives the holder a right within the particular class of goods or services [uspto.gov] for which it was issued.
Getting back to the OP question, registering a domain name does not give trademark rights. The converse is *somewhat* true; owning a trademark can give some priority over the owner of a domain name incorporating that mark, under certain circumstances generally involving bad faith (under the Anticybersquatting Consumer Protection Act [cornell.edu], 15 USC Section 1125(d), which doesn't actually require a *registered* trademark, or the ICANN UDRP [icann.org]). The alleged trademark holder would have to demonstrate either use of the domain name as a trademark, or some kind of registration. {ProfJonathan}
Re:Automatic Trademark? (Score:4, Informative)