Can o worms

[think]

Scenario: You own a one word dot com with 39 trademarks for a partial or exact match ot this word. After doing extensive research you find the term is important in the adult field, engineering, modeling, and more.

You decide to sell your domain. The parties that would benefit most use this word as part of their name and for some it is their name exactly. Some have TM's and some don't appear to. If you approach a TM owner with a domain that might reflect their company you stand to be sued and forfiet your generic name.

What happens if you promote it to all parties? First to sue and spends the most legally wins? Or is it a matter of quality generics?

This is just a hypethetical question about a a hypethetical domain
in a multi-faceted business world...............................

All input would be appreciated..............................

 

[Garry Anderson]

I would answer - but Dan Norder (namedropper) would accuse me of highjacking the thread again

Again he will question the mods intellect, about them not putting me off topic - to kill my posts.

Despite being American (you would think him pro First Amendment) there seems nothing more he would like more than to censor my posts.

You see, I believe the evidence provides conclusive and demonstrable proof that the authorites are corrupt- they aid and abet trademark overreach. Even in cases like this when the term could legally be used by any number of businesses (with or without trademark) - or for personal none comercial use.

Oops - that slipped out - very sorry Dan - it will not happen again - please forgive me.

I humbly beg you - do not cut me to pieces with your razor sharp Machiavellian wit ;-)

 

[jberryhill]

"Or is it a matter of quality generics? "

It depends on the name, which is difficult to discuss hypothetically. Courts and UDRP panels in the majority of instances have had no difficulty recognizing that generic terms which have been registered for their generic meaning have legitimate commercial value independent of a trademark claim.

As far as "promoting" a domain name goes, others may believe differently, but my personal belief is that anyone who wants a domain name usually has no difficulty reading the whois data.

 

[think]

"Or is it a matter of quality generics? "

It depends on the name, which is difficult to discuss hypothetically. Courts and UDRP panels in the majority of instances have had no difficulty recognizing that generic terms which have been registered for their generic meaning have legitimate commercial value independent of a trademark claim.

As far as "promoting" a domain name goes, others may believe differently, but my personal belief is that anyone who wants a domain name usually has no difficulty reading the whois data.

Thank you for the replies. Whois data and quality truely outway promotion and the advice is well taken. I am probably fooling myself that promoting the domain to the various parties would help increase the bottom line.

I guess I look at the sale of Loans.com for $3 mill and the promtion and fanfair that went into it and it makes me think I might miss some great buyers if I don't promote directly.

I have recently run into issues regarding state issued TMs with another domain. Although that dispute was handled amicably and I was not in the wrong as I had just purchased a very generic dot org and the old owners wanted it back, I was still alarmed by the state TM issue. I would hate to run into that scenario with a high quality generic dot com because of direct promoting.

Thank you again for the feedback.

 

[JMJ]

I have a similar domain and if ever challenged on it I would give it away to the company who didn't sue me over it way before the one who did would ever get their hands on it.

 

[jberryhill]

"I would give it away to the company who didn't sue me over it way before the one who did would ever get their hands on it."

That doesn't mean that the plaintiff would drop the suit, in which case you would have given away your primary bargaining chip.

 

[namedropper]

I don't contact people directly, but I strongly suspect that it would increase the amount of money you could get for it. It stands to reason anyway. I can list old books I have for sale on a website and hope someone stumbles across it and digs to find my contact info, but listing them on ebay or contacting book stores or whatnot is going to give me a better chance at selling them.

As a generic with lots of potential uses, you should be fine as long as you deal with people straight up and fairly. It also helps if you have a stated alternate use in mind for if it doesn't sell, kind of a, "I've got plans to do _____ with it, but since I've got other things I'm working on I could use capital for I'd also be willing to sell." That way you have a clear legitimate use. If any company decides to get stupid about it you have clear precedent decisions in your favor that you can cite.

But then again, I always recommend consulting with an attorney under confidentiality so you can discuss the name in question to avoid any potential problems with that specific case.

 

[jberryhill]

"As a generic with lots of potential uses"

If that's what it is. The reliability of dnforum user opinions on the legal definition of "generic" is not good.

 

[namedropper]

The reliability of dnforum user opinions on the legal definition of "generic" is not good.

All too true. I'm giving Think the benefit of the doubt on this one because his descriptions seems coherent and doesn't have any of the obvious mistakes posted by others lately.

 

[think]

All too true. I'm giving Think the benefit of the doubt on this one because his descriptions seems coherent and doesn't have any of the obvious mistakes posted by others lately.

Let's say it is a 3 letter dot com and the uses apply to the acronym it implies.

There are companies like xxxengineering.com , xxx-simulation.com (another engineering company) , xxxproduct.com, xxxmagazine.com , xxx-sex.com and even x-x-x.com with an industry portal on it.

One takes a look and there are actually over 60 live company TM's using the acronym directly or as part of their company name or product. Obviously one would try to avoid marketing to these companies. So far the 3 letter domain haves't been checked for on all the TM's but the engineering term does not appear to be TM'd. Appear being the key word here.

So far he sits back and waits but he plans to promote soon and he is just trying to see what's black, what's white, and what's grey as far as domain promotion outside of forums and auction houses.