Is a Domain Name an Automatic Trademark?

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?"

Re:Automatic Trademark?

[Xuranova]

Tell that to this guy: http://nissan.com/ [nissan.com]

Re:Automatic Trademark?

[Bob Gelumph]

This case is clearly different in that the Nissan case relied on Nissan Motor being considered famous by 1994. Neither party in this case is famous.

Re:Automatic Trademark?

[Jezz]

I don't see this - a domain name isn't a trade mark. I think people often forget it's just a bit of network technology that happens to be helpful to humans, conceptually not much different to a file name. Consider if I was called "Mr Ford", and I'd registered "ford.org" am I infringing on the Ford Motor Company's TM? Personally I don't think so, if I started selling automotive goods then I can see that would change, but otherwise no.

The other domain is being stupid (deliberately so I think). If it's just a page with AdSense stuff on in then I can't see any connection to a business that would be hurt by confusion. (actually as I see it, the exact opposite is true!)

Re:Automatic Trademark?

[Xuranova]

Neither is indeed famous but all you said was:

"It would cover his area of business, not an unrelated blog. There is no way that somebody would find the sites "confusingly similar."

Nissan Computer sales and Nissan Autos are in totally unrelated businesses. Nissan just had the money to make it irrelevant.

Here's are similar cases with federal court ruling

[Alex Ethridge]

He does not own nor can he own a trademark unless it is registered. Secondly, you cannot own a trademark to words that are too simple, such as ABC Computer. I think SimpleDog would come into this category of simple names. It's just too common. There was kid named Mike Rowe who was a software developer. He registered the domains MikeRoweSoft.com and MikeRoweSoft.net. Microsoft threatened and sued and lost. They finally did what they should have in the first place. They bought the names from this highschool kid.

There was also a man named McDonald who was also a software developer. You guessed it. He registered McDonalds.com and .net before McDonald's Hamburgers did. McDonald's sued and lost and finally bought the name from Mr. McDDonald.

Here's an article: http://msl1.mit.edu/furdlog/?m=20040306 [mit.edu]
The U.S. 6th Circuit Court of Appeals in Cincinnati ruled that Michelle Grosse did not violate the law when she used the *name of Lucas Nursery and Landscaping Inc* in her domain name for a Web site she created to complain about the Canton, MI nursery.

Re:Automatic Trademark?

[SkyDude]

Tell that to this guy: http://nissan.com/ [nissan.com]

Quite a story. That guy needs a sharper, tougher lawyer.

Question: id his case is so solid, why hasn't he sued Nissan?

somewhat similar experience

[sammy baby]

WARNING: IANAL. And you really should talk to one. Nevertheless...

I had a somewhat similar experience a few years ago. A domain that I registered and was using for personal projects attracted the attention of lawyers from Shieldmark [shieldmark.nl], who asserted that I'd registered it in bad faith, and demanded that I turn over ownership of my domain to their client or face an arbitration proceeding according to the rules of ICANN's UDRP [icann.org] process. In Belgium.

In the interest of fairness, I should say that their client did have registered trademarks on the phrase that made up my domain name. On the other hand, their trademark specifically addressed the realm of agricultural products, and... well, let's just say I'm not in the agriculture business.

I sent them a polite letter back saying that while their client had my sympathies, I had registered the domain in good faith, was actively using it, and that if they initialed a UDRP against me, they'd lose. And that was the last I heard of it.

The situation here is different: this guy apparently has no claim on this domain other than the fact that your domain sounds kinda like one of the many he owns. Given that, I'd first talk to a lawyer, then do what I did: write a polite letter suggesting he pound sand.

Use of a trademark is the key factor

[cenonce]

Trademark rights are acquired by use, not necessarily by filing an application in your country's Trademark Office and definitely not by reserving a domain name. The USPTO has made it very clear that registering a domain name is meaningless to show use of a trademark in commerce. Trademarks must be used in commerce on goods or services. You do not just "get a trademark" on everything under the sun because you start using the name. That is because there is only confusion (or, the true standard, likelihood of confusion) if similar marks are used on similar goods or services. Now, there is an exception to that for "famous marks". Owners of famous marks can stop people from using similar marks on just about anything through a theory called "dilution". Recent amendments to the U.S. Trademark Act (a.k.a Lanham Act) make it very difficult to have a mark meet the standard of being "famous". Basically, you have to be a Coca-Cola, Apple Computer, or Hard Rock Cafe to get that kind of status (and even then, YOU have to prove it, you don't simply file something and "get it").

So, if he is using the trademark, I'd love to know on what? Registering a domain name and tossing up a pre-made "click through" ad page, in my mind, would not count. (He could argue that he is providing some type of advertising service, but there is a lot of room to argue on that one). Even then, if you are using the mark on " a blog providing news and information in the field of open source software", those two services are not really related. It would be the same as saying Delta Airlines and Delta Faucets (essentially identical marks) cannot co-exists. Obviously, they do and have for years.

Go see a trademark lawyer... that is obviously the smartest thing to do. Most will at least meet with you for a half-hour or an hour at no charge.

Re:Automatic Trademark?

[Fulcrum of Evil]

The Red Cross are kind of jerks - they've harrassed game developers for putting red crosses on medical stuff and even sued the Red Cross pub in england. They lost that one due to the pub being 800 years old.